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.
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| Moths |
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
- 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)
- Applying G 2/21: Preliminary opinion from the referring Board of Appeal on post-filed evidence appeal (T 0116/18) (June 2023)
- UK divergence from the EPO on plausibility (Sandoz v BMS), Part 1: Is the "plausibility" test the same for both sufficiency and inventive step? (July 2023)
- UK divergence from the EPO on plausibility (Sandoz v BMS), Part 2: Interpretation of G 2/21 (July 2023)
- Chocolate teapots and nuclear bombs: Whole range sufficiency of mechanical inventions (T 0149/21) (July 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)
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So this is a huge change! Essentially the need to ‘demonstrate’ achievement of the relevant technical effect (or even mention it) in the specification has been done away with (although probably not for medical use claims) . You can instead use post-filing data to show the relevant ‘specific’ technical effect is possessed by the claimed matter (though of course the specification must describe what the invention is useful for and how to carry it out)
ReplyDelete______________
Paras from the decision:
11.13.1 More specifically, the board considers it of little use to focus on selected wording of the application as filed. The question of whether requirement (ii) is met can only be answered against the background of the entirety of the application as filed. In addition to this, as conceded by the appellant itself at the oral proceedings, understanding requirement (ii) to mean that a positive verbal statement about the effect must be present in the application as filed would correspond to, or at least come very close to, the very strict gold standard of a direct and unambiguous disclosure developed by the Enlarged Board for assessing the requirements of, for example, Article 123(2) EPC (see the Enlarged Board's decision G 2/10). The board is convinced that such an understanding cannot have been the Enlarged Board's intention in its decision G 2/21. The Enlarged Board can be safely assumed to have taken its decision carefully and thoroughly considered which words to use; however, neither order no. 2 nor e.g. point 72 of the Reasons uses the words associated with the gold standard, but, on the contrary, they apply less strict words. They speak of "derivable"/"derive" but not of e.g. "directly and unambiguously derivable".
Last part of 17.1:
… However, as set out above, experimental proof or a positive verbal statement of the purported effect is not a prerequisite for requirement (ii) to be met. Hence, 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.
_________
It’s clear that ‘plausibility’ or whatever one calls it now is much less strict. There is certainly no requirement to explicitly state the specific technical effect that gives inventive step in the specification (i.e. it’s not like added matter/novelty in needing to be directly and unambiguously derivable).
However it must be remembered that medical use claims (X for use in a method of treating Y) have an artificial claim language which does not mean what it literally means, but has its own rules of interpretation for assessing validity and infringement scope. The reference to the treatment in a medical use claim is interpreted by case law essentially as a technical feature of the claim which requires achievement of therapy. So almost always in order to show enablement in the specification of a medical use claim you must show ‘achievement’ of therapy (not just the concept of doing so and not just providing the method of carrying out the therapy). That case law is very entrenched and reflects an understanding of what the contribution is at the EPO for a medical use claim.
The insecticidal composition claim of T116/18 relied on achievement of a synergistic effect and this is not a medical use claim, and there is no specific feature in the claim which ‘directly’ reflects achievement of technical effect. The difference allows 2 strands of case law to develop now in terms of what needs to be in the specification for plausibility/enablement for therapy and non-therapy inventions.
[See also T873/21, T258/21 which dealt with plausibility after issuing of G2/21]
Or, considered another way, a referring TBoA that clearly favoured an "ab initio implausiblity" standard when making the referral has interpreted the appallingly unclear "decision" from the EBoA in G2/21 in a manner that more-or-less corresponds to ab initio implausiblity...... Quelle surprise, as our Francophone colleagues might say.
ReplyDeleteOther TBoA have interpreted G2/21 differently, and it's not really clear to me why this decision should necessarily be given more weight than those. I don't dispute it _might_ be - Perhaps this will become the leading decision over time and boards will converge around a much more lenient approach than previously, who can say, but here and now the landscape of what you might call "plausibility" (or otherwise) appears to me at least to be more-or-less unaltered, with decisions going each way on the facts at issue, just as before G2/21 - perhaps slightly more lenient overall, but not a revolutionary change in practice.
I would like to draw your attention to T 758/21, which has been commented in another blog.
ReplyDeleteIn spite of the EBA limiting its decision to IS, T 758/21 applies G 2/21 also to sufficiency, next to applying it to IS. No surprise as the two are linked.
If an effect is not claimed, but cannot be achieved, the objection is a lack of IS.
If an effect is claimed, but cannot be achieved, the objection is a lack of sufficiency
As the EBA disliked “plausibility”, the new word is “credibility”.
What is the gain?
T 681/21, commented in another blog, makes clear that a synergistic effect cannot be claimed later, when nothing has ever been said about such a synergistic effect-
ReplyDeleteAccording to T 116/18, it is enough to disclose any kind of synergy in the application as filed, in order to later apply this effect to a synergy which has never been disclosed originally.
It boils down to, once a general buzzword (synergy) has been dropped in the original disclosure, any specific buzzword (synergy for moths) falling under the general definition of the buzzword, but not disclosed (as other moths are concerned) can be used later, even if not originally disclosed.
I am not convinced that this is correct.
I think in certain technical fields there is the acceptance that one files comparative data in respect of the cited prior art and shows that the claimed matter is superior in some technical property, and that gets you a patent. The approach to 'problem to be solved' and what disclosure/data needs to be in the specification is more informal and relaxed, and really the problem to be solved gets defined taking into account the post-filing data as well as the specification. I think that is what T116/18 is returning to with a lenient interpretation of the G decision. That might be the best approach in the field of insecticidal compositions.
DeleteWhy should the approach be more informal and relaxed, especially in the field of insecticidal compositions?
DeleteAre we in presence of a "dynamic" interpretation of G 2/21?
Dynamic interpretations are never good as they are too much oriented to the "zeitgeist".
I would have been prepared to accept, that in presence of contradictory results of the post-published experimental data of the proprietor and of the opponent, the benefit of the doubts goes to the proprietor. See T 72/04, T 808/05 or T 1598/15.
In the present case, the comparison was between apples and pears, and a lenient attitude was not justified.
Thanks DXThomas. If you've ever done EPO prosecution in French (which sometimes happens with French applicants) there is a much more relaxed atmosphere, and it's like friends getting together and sorting out the claims getting to grant. EPO case law doesn't really apply in the same way, and it's more of a gentle informal discussion of what is good about the invention with any difference over the prior art leading to grant. I think it's sensible for the EPO to encompass national differences in this way and also recognise that most cases don't get opposed and in reality the patent won't ever bother any other party. T116/18 is really a statement about this, and a confirmation that Boards and Divisions can forget about plausibility and return to the previous ways of doing things that worked for them. I think this is especially important for Examiners to know that during first instance examination they should keep it simple in terms of getting things to grant. In many low-value fields patent applications just require turning the handle. The Examiner gets to trust the applicant over many cases, and then just follows a simple formula to get to grant without the stricter case law being thought about too much. No one is hurt by this, and no one really cares it happens. The white heat of case law argument can then be kept in the arena of high-value cases where patent attorney fees are afforded easily.
Delete@ Santa,
DeleteIt happens that I am French and I have, as staff member of the EPO in Munich for over 30 years, done prosecution at the EPO in all roles of an ED or of an OD, and in all three official languages. I do not remember having had written or oral proceedings were representatives and members of the division acted like friends in a more relaxed atmosphere. I do not remember that it was more like a gentle informal discussion of what is good about the invention with any difference over the prior art leading to grant, be it with French or other applicants and their representatives.
In the early days of the EPO, there was something called “user friendliness” which has, alas, disappeared quite a while ago, when production started to be pushed up. “User friendliness” has never lead to situations as you describe, at least not in the various technical areas I have been working in as examiner or as director.
Contrary to what you think, it is neither sensible nor reasonable for the EPO to encompass national differences. I think that the EPO has been set up to overcome them and not to foster them, as nice and gentle as they may appear.
I can agree with you that most cases don't get opposed and the patent might not bother any other party. But this is not a reason to have a nice friendly chat with the representative and hence more or less close both eyes when it comes to grant. Based on your reasoning, the EPO should grant more or less any application passing by, and especially when it is in French.
When dealing with an application and granting a patent, the ED does not know at this moment whether this patent is going to be opposed or not, even in what can be considered low-value fields, should they at all exist. Whether the patent is a nugget or not is also something the ED is not aware of, and it should not matter for an ED.
Applicants spend a lot of money in procedural fees and fees for representation. Should all this money be spent in order to have a nice piece of paper to put on the entrance of a company or in the lounge of an inventor? Reasonable doubts are permitted.
I do not think that T 116/18 is a confirmation that Boards and Divisions can forget about plausibility and return to the previous ways of doing things that worked for them. When looking at recent decisions, the term “plausible” has been replaced by “credible”. Where is the gain?
I am surprised that you think there are low-value fields and henceforth patent applications just require turning the handle. I have worked in a lot of different fields, and I never had the feeling that for applicants it was a low-value field.
As an examiner, you certainly get to know applicants and their representatives. The role of an examiner is not merely to trust the applicant over many cases, but to act for the silent partner, i.e. the public and society at large. In the early days of examination, there was no case law, but with the years there is more and more case law. Whether it is strict or not is not a matter for discretion. When it comes from the EBA or it is mentioned in the Guidelines, examiners have no choice but to apply it.
To sum it up, I cannot share your vision of the role of an ED.
Thank you DXThomas for that long and thoughtful reply. My comments reflect the sort of 'indicators' I use to advise clients as an EPO representative. A lot of what I do depends on predicting Examiner behaviour so that I can suggest the appropriate claim amendments, post-filing data, types of arguments etc. Some Examiner are strict and so it is like playing a complex chess game with them, but where they are both a player and in charge of the rules. Some Examiners are more easy-going and will generally appreciate when there is a real invention present in the specification and will suggest helpful amendments to get to allowance. Case law is of course the set of rules by which we all play by, but Examiner interpretation of case law is also very important. There is also Examiner strictness/leniency, Examiner annoyance, Examiner impatience sometimes, and certainly often Examiner annoyance and impatience is justified in situations where the applicant is not being reasonable. And so the the point I want to make in response to you is that there is a lot of 'discretion' in how an Examiner will apply case law. I compare Examiners across a lot of cases over many years and see the consistent differences between Examiners. That comes about due to human nature, and the different ways in which we all interpret the same case law. There is no right and wrong here because human beings are different to each other. I certainly believe there are distinct differences between UK, German and French interpretations of the EPC and how examination should be conducted to get to allowable claims. There is nothing wrong with these differences, plus the fact we cannot force people to think in a particular way for ethical (human rights) reasons. However my job as an attorney is to be mindful of all these factors (and their existence) so I can advise my clients as best as possible.
DeleteNow also worth mentioning T1989/19 as discussed at https://justpatentlaw.blogspot.com/2023/12/t198919-post-published-data-for.html. This blog article points out: The present Board interprets G 2/21, in translation: "it is not a prerequisite that this claimed effect must be expressly mentioned or proven in the application as originally filed.". Clearly invention by post-filing data (post filing date) is in fashion now and will probably help to decide a lot of borderline cases, especially where the post-filing data relates to the specific technical effect over the prior art, rather than the technical effect of the PCT claims.
Delete