Clarity on the interpretation of G2/21 from the referring Board (T 0116/18)

http://ipkitten.blogspot.com/2023/11/clarity-on-interpretation-of-g221-from.html

The full written decision of the Board of Appeal in T 0116/18, the referring Board to G2/21, was published today. Whilst we have already had a number of Board of Appeal decisions interpreting G2/21 (IPKat), the decision in T 0116/18 provides the most comprehensive analysis so far. The Board of Appeal’s interpretation of G2/21 in T 0116/18 is also fascinating for its explicit rejection of the language of plausibility, its acknowledgement of the divergence between the EPO and the UK courts on the issue of plausibility, and for its clear interpretation of what G2/21 does and does not require with regards to the disclosure of a technical effect relied on for inventive step. 

G2/21: Case catch-up

In G2/21, the Board of Appeal asked the EBA to clarify whether post-published evidence may be taken into account for inventive step. The EBA ordered that:

G2/21, Headnote II: “A patent applicant or proprietor may rely upon a technical effect for inventive step if the skilled person, having the common general knowledge in mind, and based on the application as originally filed, would derive said effect as being encompassed by the technical teaching and embodied by the same originally disclosed invention” 

The EBA did not elaborate on how G2/21 should be applied. The Board of Appeal in T 0116/18 has now offered their own in-depth interpretation of the general principles of G2/21 and applied these to the facts of the case. 

G2/21 does not permit armchair inventing 

The Board of Appeal in T 0116/18 first noted that G2/21 does not give patentees carte blanche to rely on any purported technical effect at any stage of proceedings. G2/21 clearly does not permit armchair inventing (r.11.1, Cf. T 0258/21, IPKat). Instead, according to G2/21, in order to rely on a technical effect for inventive step, it is required that the skilled person would derive said effect as being (i) encompassed by the technical teaching and (ii) embodied by the same originally disclosed invention. 

Moths

What does it mean for the technical effect to be “encompassed”?

The Board of Appeal asked what it means for the technical effect to be “encompassed” by the technical teaching of the originally disclosed invention. According to the Board of Appeal, for this requirement to be met, “the purported technical effect together with the claimed subject-matter need only be conceptually comprised by the broadest technical teaching of the application as filed” (r.11.10). With respect to this requirement, the Board of Appeal particularly emphasised that it was the broadest technical teaching that should be used. Accordingly, it may be “sufficient that the skilled person, having the common general knowledge in mind, and based on the application as filed, recognises that said effect is necessarily relevant to the claimed subject-matter.” (r.11.10)

What does it mean for the technical effect to be “embodied”?

The Board also asked what it means for the technical effect to be “embodied” by the originally disclosed invention (for the purposes of which, the Board construed “technical teaching” and “invention” used in the headnote of G2/21 as being broadly synonymous, r. 11.9). To assess whether a technical effect was embodied by the application as filed, the Board of Appeal considered the relevant question to be whether “the skilled person, having the common general knowledge on the filing date in mind, and based on the application as filed, [would] have legitimate reason to doubt that the purported technical effect can be achieved with the claimed subject-matter?”

As this Kat has pointed out since G2/21 was issued (IPKat, IPKat), G2/21 did not change the evidence standard before the EPO. The standard is and always has been, whether there is substantiated doubt with respect to a claimed invention or its purported technical effect. As confirmed by the Board of Appeal in the present case, whether the evidence standard for an invention or its technical effect has been met should be determined according to the long established test of a whether a skilled person would have substantiated doubt with respect to said invention or effect at the filing date, in view of the application as filed and common general knowledge (IPKat: Plausibility demystified – a review of EPO case law before G 2/21). 

As such, G2/21 did not swing “the dial of plausibility” in one direction or the other. The dial remains where it always has been. The Board of Appeal in T 0116/18 confirms that, following G2/21, the test remains whether there is substantiated doubt with respect to the invention or its purported technical effect (IPKat). 

Does the application as filed need to provide experimental proof of the purported technical effect?

Following G2/21, the Board of Appeal confirmed that it is not necessary for an application as filed to contain experimental proof of a purported technical effect (11.12):

“if requirement (ii) were indeed to be understood as requiring experimental proof of the purported technical effect, the practical consequence would be that patent applicants and proprietors could limit themselves only to subject-matter for which there is corresponding experimental proof in the application as filed; however, this is in conflict with the fact, as also pointed out by the case law referred to by the Enlarged Board (G 2/21, point 60 of the Reasons), ‘that the EPC required no experimental proof for patentability and…that the disclosure of experimental data or results in the application as filed and/or post-published evidence was not always required to establish that the claimed subject-matter solved the objective technical problem.'” (r. 11.12.2).

Does the application as filed need to provide positive verbal reasoning about the purported technical effect?

The Board of Appeal was also of the view that G2/21 does not require a purported technical effect to be supported by a positive verbal statement in the application as filed (Cf. T 2465/19, IPKat). The Board of Appeal reasoned that, if the EBA had intended a positive verbal statement of an effect to be required, they would have made sure to align the wording of their order with the case law on basis for amendments (Article 123(2) EPC). In other words, the EBA would have quoted the very strict gold standard of “a direct and unambiguous disclosure” associated with Article 123(2) EPC. However, G2/21 requires merely that a technical effect is “derivable” from the application as filed, and not that it is “directly and unambiguously derivable'” (11.13.1). 

The Board of Appeal concluded: 

“[The requirement provided by G2/21, Headnote II] is met unless the skilled person, having the common general knowledge on the filing date in mind, and based on the application as filed, would have legitimate reason to doubt that the purported technical effect can be achieved with the claimed subject-matter. For requirement (ii) to be satisfied, experimental proof of the purported technical effect or a positive verbal statement is not necessarily required in the application as filed.”

What happened to plausibility?

As this Kat has argued extensively, despite being named as such, G 2/21 is not really about “plausibility” (IPKat, IPKat). The order from the EBA in G2/21 did not use the terminology of plausibility. Instead, the EBA dismissed the concept of plausibility as a “generic catchword (G2/21, r.58)”. The Board of Appeal in the present case also found that the focus should be on applying the order from the EBA, “rather than simply using any rationale developed in the previous plausibility case law” (r. 11.3.2).

Unlike the EPO, however, the UK national courts are still preoccupied with plausibility in all of its varied forms (IPKat). Recently, the judge in Sandoz v BMS ([2023] EWCA Civ 472) interpreted G2/21 as being close to an ab initio plausibility standard in line with the UK Supreme Court decision in Warner-Lambert. The Board of Appeal in the present case was clearly not impressed with this interpretation: “The board’s interpretation of G 2/21 is different from this […] instead of the ‘ab initio plausibility standard’, the standard as defined in order no. 2 of G 2/21 […] needs to be applied” (r. 12).  

The Board of Appeal noted, however, that a decision of a national court had no binding effect on it and could therefore be ignored.

Back to the moths

Returning to the case at hand, the question before the Board of Appeal in T 0116/18 related to the inventive step of a product claim directed to a new combination of known insecticides (EP 2484209). The application included data demonstrating the inventive, synergistic effect of the insecticide combo against two species of moth. The Opponent submitted data showing that the insecticide combo did not have a synergistic effect against one of the exemplified moth species (P. xylostella) at certain weight ratios (i.e. over the whole scope of the claim). In response, the Patentee submitted their own additional data, showing that the insecticide combo had a synergistic effect against an alternative species of moth, Chilo suppressalis.  The Patentee argued that the objective technical problem to be solved should be reformulated to be the provision of an improved insecticide against this third moth species. 

Therefore, in the case in question, both the Patentee and the Opponent in T 0116/18 wished to rely on post-published data. The purported technical effect on which the patentee wished to rely was not supported by a positive verbal statement. Some experimental evidence was provided in the application as filed, but this was for a different moth species to that which was now the subject of the purported technical effect. 

The Board of Appeal considered the broadest technical teaching of the application as filed to be that a combination of the claimed compounds could result in a synergistic effect against insects (r. 15). Given that the third species of moth was a specific insect, falling under the broader term “insects” in the broadest technical teaching, the Board of Appeal was satisfied that the purported technical effect was encompassed by the broadest technical teaching of the application as filed (r. 16). Presumably, a synergistic effect of the compounds against rats would not have been considered as “encompassed” by the originally disclosed invention. 

Following its interpretation of G2/21, the Board of appeal further concluded that “the mere fact that the synergistic effect against Chilo suppressalis is not proven or explicitly mentioned for insecticide combinations according to claim 1 as granted in the application as filed, as such, does not go against it being taken into account” (r. 16). Furthermore, applying the usual evidence standard, the Board of Appeal noted that the Opponent had not provided any concrete evidence “as to why the skilled person would have legitimate reason to doubt [e.g. in view of common general knowledge] that the specific purported technical effect [could] be achieved “. 

The Board of Appeal concluded: 

“the skilled person would have no legitimate reason to doubt that the purported technical effect can be achieved with the subject-matter of claim 1 as granted. The purported technical effect is embodied by the same originally disclosed invention. […] It can be concluded that the respondent may rely on the purported technical effect based on the application as filed.“

Final thoughts

In this Kat’s view, the interpretation of G2/21 by the Board of Appeal in the present case provides some welcome clarity. 

First, there is no change with regards to the evidence standard for either sufficiency or inventive step. The test remains whether, in view of the application as filed and common general knowledge, a skilled person would have substantiated doubts with respect to the invention or its purported technical effect (i.e. is the technical effect “embodied” by the technical teaching of the application as field) (IPKat, IPKat). However, if the language of plausibility must be used, G2/21 seems to most align with a lack of ab initio implausibility standard. 

Second, G2/21 does not necessitate there to be either a positive statement or experimental evidence of a technical effect in order for the said effect to be relied on for inventive step (IPKat). In order to be relied on for inventive step, a technical effect must be “conceptually comprised” in the broadest technical teaching of the application as filed (“encompassed”). In other words, the technical effect must be in some way related to the general disclosure about the invention provided in the application as filed. 

Finally, as far as the interpretation of G2/21 is concerned, the concept of plausibility is superfluous to requirements (IPKat). 

Further reading

Image credit: DALLE-3

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