http://ipkitten.blogspot.com/2024/01/petition-of-review-filed-in-referring.html
The Opponent in the referring case to the Enlarged Board of Appeal (EBA) in G 2/21 has filed a petition for review following the final decision of the Board of Appeal. If the EBA agrees with the petitioner that there was a violation of their fundamental right to be heard, the case may be reopened. However, petitions for review are considered extraordinary legal remedies and it is notoriously difficult to persuade the EBA of their admissibility. Is the Opponent clutching at straws, or was there a substantial procedural violation in T 0116/18?
G 2/21 and T 0116/18: Case catch-up
In G 2/21, the EBA considered whether post-published evidence may be taken into account for inventive step. The EBA ordered that:
“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” (G 2/21, Headnote II)
However, the EBA did not elaborate on how G 2/21 should be applied. The Boards of Appeal were therefore left to interpret the order on a case-by-case basis. The referring Board of Appeal to G 2/21 in T 0116/18 recently provided their own interpretation of the general principles of G 2/21 with respect to the facts of the particular case. In its written decision, the Board of Appeal concluded that G 2/21 does not require there to be either a positive statement or experimental evidence of a technical effect in order for the 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.
On the basis of this interpretation, the Board of Appeal allowed the Patentee to rely on post-published data as evidence of a technical effect of the invention relied on for inventive step. The technical effect relied on by the Patentee was not explicitly disclosed in the application as filed.
Petitions for review – Legal background
It is very difficult to get a petition for review heard by the EBA. The most common ground on which petitions for review are filed is that of a fundamental procedural defect of the right to be heard (Article 112a EPC). However, the EBA often unanimously rejects petitions as being clearly inadmissible, on the grounds that the petitioner failed to take advantage of an opportunity to raise the issue with the Board of Appeal in question (Rule 106 EPC). Critically, petitions of review cannot be used to review the application of substantive law (CA/PL 17/00 of 27 March 2000).
A violation of the fundamental right to be heard in T 0116/18?
In their request for a petition for review in T 0116/18, the Opponent (Syngenta) argues that a fundamental violation occurred in relation to the application of G 2/21 by the Board of Appeal. The Opponent’s central argument is that a new legal test was used by the Board of Appeal in their written decision and that the Opponent was not given the opportunity to comment on this new test during oral proceedings.
The Opponent highlights Reason 1.1 in the Board of Appeal’s written decision:
“[…] in the board’s view, the following question is to be asked: would the skilled person, having common general knowledge in mind, and based on the application as filed, have legitimate reason to doubt that the technical teaching at issue, i.e. the purported technical effect together with the claimed subject-matter, is an embodiment of the originally disclosed invention, i.e. the broadest technical teaching of the application as filed?“
| Grasping at straws? |
For the Opponent, this test made a number of assumptions about the order from the EBA in G 2/21 that were not discussed at oral proceedings. In particular, “it implies that the ‘would” of […] of G 2/21 is not to be taken into consideration. It defines the term ‘technical teaching’ as corresponding to ‘the purported technical effect together with the claimed subject-matter’. It gives the term ‘the originally disclosed invention’ a specific meaning – by stating that this would correspond to ‘the broadest technical teaching of the application as filed’. Lastly, it stipulates that any purported technical effect may give rise to a patent provided that it can be considered, together with the claimed subject-matter, an embodiment of the broadest technical teaching of the application as filed”.
However, the Opponent may find it difficult to convince the EBA that these are valid grounds justifying a petition. It is established case law that Boards of Appeal are not obliged to explicitly state the reasons underlying a decision until they issue the final decision in writing. Furthermore, whilst the factual bases for a petition are the minutes of the oral proceedings and the written decision, it also cannot necessarily be inferred from the omission of a point of reasoning from the minutes of oral proceedings that a point was not considered (Case Law of the Boards of Appeal, V-B-3.11).
Final thoughts
Most requests for petition for review are found inadmissible by the EBA. To this Kat, it seems likely that the EBA will reject this petition as the Opponent’s arguments require a nuanced distinction to be drawn between the Board of Appeal’s interpretation of G 2/21 at the hearing and in its written decision. Even if the petition were to be granted, there would still appear to be limited scope for the Patentee to convince the Board of Appeal to reverse its decision. However, in the meantime, Boards of Appeal will continue to apply G 2/21, potentially in ways that diverge from T 0116/18.
Further reading
- Plausibility demystified – a review of EPO case law before G 2/21 (Feb 2023)
- G 2/21: Is the technical effect embodied by the invention as originally disclosed? (March 2023)
- To encompass and embody: Applying the abstract principles of G 2/21 (May 2023)
- The relevance of G 2/21 to machine learning inventions (T 2803/18) (Aug 2023)
- Interpretation of G 2/21: Inventive step may be supported solely by post-published data (T 0116/18) (Sep 2023)
- Reliance on a silent technical effect: Application of G 2/21 to semiconductors (T 2465/19) (Oct 2023)
- G 2/21 does not permit armchair inventing (T 0258/21) (Oct 2023)
- Clarity on the interpretation of G2/21 from the referring Board (T 0116/18) (Nov 2023)
- Crystallising the interpretation of G 2/21 (T 1989/19) (Dec 2023)
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