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Clarity on G2/21 from the EPO Board of Appeal in T0116/18

10 January 2024

Last year we reported here that the Enlarged Board of Appeal had established in G2/21 new guidance for determining when post‑published evidence can be relied upon to support an inventive step at the EPO.   It was, however, unclear how this guidance would be applied going forward.  The written decision of the Board of Appeal in T0116/18 (the referring case which led to the G2/21 decision) has now been published and provides the most comprehensive insight so far into how G2/21 will be applied.

Background to the decision

G2/21 decided that post-published evidence could not be disregarded simply because it was post-published.

It also decided that a technical effect for inventive step could be relied upon if the skilled person would derive from the application as filed that the technical effect is:

  • encompassed by the technical teaching, and
  • embodied by the same originally disclosed invention.

Summary of the decision

In T0116/18, the Board have interpreted encompassed by the technical teaching as meaning that the technical effect “need only be conceptually comprised by the broadest technical teaching of the application as filed”.  It was also confirmed that an explicit positive statement is not required in the application as filed to support a technical effect.

To assess whether the technical effect was embodied by the invention, the Board stated that this should be assessed based on whether the skilled person would “have legitimate reason to doubt that the purported technical effect can be achieved”.  It was, however, confirmed that it is not always necessary for an application, as filed, to contain experimental evidence to support an alleged technical effect.

As a final point, the decision also appears to confirm that the concept of plausibility, which is continuing to make a regular appearance in recent UK court decisions, will not be adopted by the EPO, at least as far as the interpretation of G2/21 is concerned.  Although, this decision does appear to be in line with ab initio implausibility, in which post-published evidence can only be disregarded if there is a legitimate doubt that the technical effect would have been achieved at the filing date of the application i.e., a technical effect is considered plausible by default, unless it can be shown otherwise.

Specifics of the decision

The specifics of the case in question relate to a composition involving a new combination of known insecticides.  The patentee was relying on post-published evidence to demonstrate a synergistic effect of the known insecticides against Chilo suppressalis, a specific species of moth, while the opponent had submitted data showing that the claimed insecticide combination had no effect against a different species of moth.  Crucially, the synergistic effect against Chilo suppressalis was not explicitly described in the application as filed.

In applying its interpretation of G2/21, the Board considered the broadest technical teaching to be that “a combination of the known insecticides could result in a synergistic effect against insects in general”.  Given that Chilo suppressalis was a specific insect, the technical effect was considered to be encompassed by the technical teaching. 

It was also held that the opponent had not provided any concrete evidence “as to why the skilled person would have legitimate reason to doubt that the specific purported technical effect [could] be achieved” and so the technical effect was embodied by the invention.  The Board therefore concluded that an inventive step could be recognised based on the post-published data.

What can be taken from this decision?

This decision appears to be quite favourable towards applicants and patentees by setting a relatively low bar in terms of requirements for a technical effect to be relied upon in establishing the presence of an inventive step.  In particular, it will be helpful to applicants and patentees who find themselves having to rely upon a technical effect that has not been explicitly mentioned in the application as filed and must rely upon post-published data in support.

In view of this decision, it would be prudent for extra care to be taken when describing technical effects in newly filed patent applications to avoid too narrow a technical teaching.  How these technical effects are described could prove to be important in determining whether the effect is considered to be encompassed by the technical teaching.

Going forward, it will be interesting to see whether other Boards of Appeal adopt a similar patentee-friendly interpretation of G2/21 or not.

Daniel Hirons

Life Sciences & Chemistry group

This publication is a general summary of the law. It should not replace legal advice tailored to your specific circumstances.

© Withers & Rogers LLP January 2024