Zusammenfassung von EPC2000 Art 056 für die Entscheidung T0116/18 vom 28.07.2023

See also abstracts under Article 112(1)(a) EPC and Article 13(2) RPBA 2020. In T 116/18 (of 28 July 2023) the board observed that in contrast to the questions referred to the Enlarged Board (EBA) in its interlocutory decision of 11 October 2021, which focussed on whether certain evidence proving a certain technical effect could be taken into consideration, Order no. 2 of G 2/21 focused on whether this technical effect, which said evidence proved, could be relied on. The board could not see, however, why this difference in wording should imply any difference in substance. The board found that the EBA's focus on the application as filed and the filing date (point 93 of the Reasons) was intended to prevent the filing of applications directed purely to speculative inventions made only after the filing date. The requirement(s) established in Order no. 2 had to be looked at with the eyes of the skilled person "having the common general knowledge in mind, and based on the application as originally filed". Even though not stated explicitly in Order no. 2, the board found that the common general knowledge thus had to be that existing on the filing date of the application. The board explained that Order no. 2 required that, for a patent applicant or proprietor to be able to rely on a purported technical effect for inventive step, the skilled person would derive said effect as being (i) encompassed by the technical teaching, and (ii) embodied by the same originally disclosed invention. The board noted that the EBA did not refer to any of the plausibility standards it had identified in its referring decision, but used new legal terminology that had not been applied so far in the context of inventive step. What mattered however was that when deciding whether a purported technical effect may be relied upon for inventive step, it was the requirement(s) defined by the EBA in Order no. 2 that had to be applied, rather than simply using any rationale developed in the previous plausibility case law. The board further interpreted the linking of requirements (i) and (ii) with "and" to mean that both were separate requirements which had to be met cumulatively for a patent applicant or proprietor to be able to rely on the purported technical effect. As to the definitions of "technical teaching" and "invention", the board referred to the adoption by the EBA (in particular in G 2/07, G 1/19) of the reasoning in the "Rote Taube" decision by the German Federal Court of Justice (BGH 27.3.1969, X ZB 15/67). It concluded the term "technical teaching" in requirement (i) had the same meaning as the term "same originally disclosed invention" in requirement (ii), namely the broadest technical teaching of the application as filed contained in it with regard to the claimed subject-matter. In the light of this, the board held that for requirement (i) to be met, the purported technical effect together with the claimed subject-matter needed only to be conceptually comprised by the broadest technical teaching of the application as filed. It might be sufficient that the skilled person, having the common general knowledge in mind, and based on the application as filed, recognised that said effect was necessarily relevant to the claimed subject-matter. As regards requirement (ii), in the board's view, the following question was to be asked: would the skilled person, having the common general knowledge on the filing date in mind, and based on the application as filed, have legitimate reasons to doubt that the technical teaching at issue, i.e. the purported technical effect together with the claimed subject-matter, was an embodiment of the originally disclosed invention, i.e. the broadest technical teaching of the application as filed? The board took the view that it was not necessarily a precondition for requirement (ii) to be satisfied that the application as filed contained experimental proof that the purported technical effect was actually achieved with the claimed subject-matter at issue. It was also not necessarily a precondition for requirement (ii) to be fulfilled that the application as filed contained a positive verbal statement about the purported technical effect. The board's overall conclusion regarding requirement (Ii) was thus the following: requirement (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.