Zusammenfassung von Article 056 EPC für die Entscheidung T0314/20 vom 16.11.2023

In T 314/20 the board identified three challenges in interpreting point 2 of the Order of G 2/21: the undefined relationship between the new requirements "encompassed by the technical teaching" and "embodied by the same originally disclosed invention", and previous plausibility case law; that the Enlarged Board (EBA) did not expressly define these requirements; and that the EBA did not expressly state the purpose of these requirements. The board examined two issues it faced with the interpretation of G 2/21 in T 116/18 of 28 July 2023. The first concerned an inconsistency in the reasoning. On the one hand the board in T 116/18 had stated that the EBA in G 2/21 had not referred to any of the "plausibility" standards identified in its referring decision but had instead adopted new requirements which were to be applied rather than any rationale developed in the previous plausibility case law. However, in its interpretation of requirement (ii) of point 2 of the Order the same board had effectively adopted what it defined in the referral as the "ab initio implausibility" standard. The second issue identified by the board was that some of the inferences drawn in T 116/18 were not supported by the text of G 2/21. The first of these identified by the board concerned the just mentioned adoption of the "ab initio implausibility" standard; nowhere in G 2/21 did the EBA state that requirement (ii) was met unless the person skilled in the art would have had legitimate reasons to doubt that the purported technical effect would have been achieved on the filing date. The current board highlighted a second inference in T 116/18, that a positive verbal statement of the technical effect relied upon by the patent applicant or proprietor in the patent application as originally filed was not necessary for requirements (i) and (ii) of point 2 of the Order of G 2/21 to be met. However, such a statement was also not to be found in G 2/21. The two main reasons provided for this latter conclusion were: i) the EBA did not state that the effect must be "directly and unambiguously derivable" but used less strict words ("derivable"/"derive"); ii) the terms "invention" and "technical teaching" meant the same in G 2/21, and both were to be understood as "the broadest technical teaching of the application as filed contained in it with regard to the claimed subject-matter". In relation to the above-mentioned reasons provided in T 116/18, the current board considered that it was not possible to infer from the verb "derive" in point 2 of the Order of G 2/21 any specific meaning for the terms "embodied" or "encompassed". In point 72 of the Reasons in G 2/21, the EBA spoke, inter alia, of a technical effect which "was derivable for the person skilled in the art from the technical teaching of the application documents". It was also not immediately clear to the current board how it could be concluded that for requirement (i) in point 2 of the Order to be met the purported technical effect together with the claimed subject-matter need only be "conceptually encompassed" by the broadest technical teaching and that this in turn meant that "said effect need not be literally disclosed in it by way of a positive verbal statement". The present board considered that the passages of G 2/21 referred to by T 116/18 thus did not lead to the conclusion that the standard of disclosure that applied to Art. 87 EPC (concept of "same invention"), Art. 123(2) EPC or Art. 54(1) EPC (see decisions G 1/03 and G 2/10) was excluded when applying the requirements of point 2 of the Order of G 2/21. It considered that the purpose of the two requirements set out in point 2 of the Order of G 2/21 was to prevent patents from being granted for inventions that were not complete at the filing date (i.e. speculative applications). In the case in hand, the board concluded that if its understanding of the purpose of the two requirements was correct, the respondent could not rely on the technical effect. This effect was not only unsupported and not made credible by the application as originally filed; it even contradicted its technical teaching. Therefore, whatever the meaning of the two requirements in G 2/21, they could not be met in the present case if patenting for inventions not made at the filing date was to be excluded. Indeed the board concluded the requirements in point 2 of the Order of G 2/21 were not met. The board refused the respondent’s request for a referral to the EBA, in which it sought clarification of the terms referred to in point 2 of the order of decision G 2/21 and claimed there was divergence in the case law. The board found the EBA had deliberately chosen not to define the aforementioned requirements and it was thus uncertain whether the EBA would introduce further definitions if asked for additional guidance. Further, the board found that there was no apparent divergent lines of case law and believed that any tenable interpretation of the requirements introduced in decision G 2/21 would lead to the conclusion it had reached in the case in hand.