4.1.2 Technical effect encompassed by the technical teaching of the application documents and actually provided/achieved
This section has been updated to reflect case law and legislative changes up to 31 December 2023. For the previous version of this section please refer to the "Case Law of the Boards of Appeal", 10th edition (PDF). |
In T 116/18 of 28.07.2023 the board held that when deciding whether a purported technical effect may be relied upon for inventive step, it was the requirement(s) defined by the Enlarged Board in Order no. 2 of G 2/21 that had to be applied, rather than simply using any rationale developed in the previous plausibility case law. Interpreting the legal principles stated in G 2/21, it concluded that Order no. 2 set out two separate requirements that must both be met to rely on a technical effect: (i) that the effect was "encompassed by the technical teaching" and (ii) that it was "embodied by the same originally disclosed invention" (see also T 1989/19). For requirement (i) to be met, the board found 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". Requirement (ii) would be 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." The board concluded that for requirement (ii) to be satisfied, experimental proof of the purported technical effect or a positive verbal statement was not necessarily required in the application as filed.
In T 1203/19 the subject of dispute between the parties was whether the technical effect associated with the distinguishing features specified in claim 13 (oncolytic adenovirus) was derivable from the application as filed. The board found the technical problem to be solved starting from document (6) was the provision of an oncolytic adenovirus with improved antitumour efficacy. As was shown in post-published document (21), an adenovirus with the features of claim 13 (VCN-01) showed improved antitumour activity compared to the adenovirus described in document (6). Hence, the problem was solved by the oncolytic adenovirus of claim 13.
In T 2465/19 the board noted with reference to Headnote II of G 2/21 that the technical effect of an invention over the closest prior art need not be explicitly stated in the application, as long as it was derivable from the original application, in particular since the closest prior art may not have been known to the applicant when drafting it (see also from the earlier jurisprudence: T 861/08, T 716/08 amongst others).
In T 681/21 the formulation of the technical effect differed from that identified in the patent. the board concluded the alleged synergistic effect would not have been considered by the skilled person as being encompassed by the technical teaching of the application as filed and had to be disregarded.
In T 1446/21 the board found that a skilled person would not infer that the allegedly improved foaming characteristics were encompassed by the technical teaching and embodied by the same originally disclosed invention. Thus, the respondent could not rely on improved foaming characteristics in the present case, which in any event were merely an unfounded allegation not supported by any evidence.
Many of the decisions that deal with the issue of reliance on a purported technical effect when assessing whether or not the claimed subject-matter involves an inventive step also deal with post-published evidence and the question of whether the technical problem was credibly/actually solved and what role post-published evidence may play therein. As such the majority of the case law regarding reliance on a technical effect for inventive step is presented in chapter I.D.4.3.3 "Post-published evidence and reliance on a purported technical effect for inventive step ("plausibility")".
- T 1994/22
Abstract
In T 1994/22 the respondent (patent proprietor) inter alia had relied on post-published data D32 and submitted that Form II (according to claim 1 of the main request) as claimed had an improved photostability over Form III (comparative).
The respondent relied on the statements made in T 116/18 as regards G 2/21 and submitted that referring to the provision of a novel crystal of compound A (selexipag) and to a pharmaceutical product of "high quality for which constant effect can always be shown and a form which is handled easily industrially", the skilled person would have understood that the effect of improved photostability was implied by or at least related to the technical problem initially suggested in the originally filed application. Therefore, requirement (i) [in T 116/18], as encompassed by the technical teaching, was met. Furthermore, the respondent claimed the skilled person would not have had any legitimate reason to doubt that the improved photostability could be achieved with the claimed polymorphic form of selexipag. Therefore, requirement (ii) [in T 116/18], as embodied by the same originally disclosed invention, was also met in the present case.
In line with T 116/18, the board in the present case acknowledged that the mere fact that photostability or improved photostability was not contained in terms of a positive verbal statement in the application as filed and that the application as filed did not contain any data as regards photostability, as such, did not imply that the effect of improved photostability could not be relied on in terms of G 2/21 or T 116/18.
However, the board did not consider such a sweeping statement regarding "high quality" and "easy industrial handleability", which covers a plethora of potential advantageous properties, to encompass photostability, let alone improved photostability. If such a sweeping statement were sufficient, a reference to high quality would be sufficient to invoke whatever technical effect as being encompassed by an application as filed in the sense of G 2/21. This would essentially render the first criterion of order no. 2 of G 2/21 meaningless. In the present case, the application as filed was in fact directed to particle size, residual solvent content and amount of impurities, properties which are entirely unrelated to photostability. Therefore, based on these properties, having the common general knowledge in mind, the skilled person would by no means have recognised that (improved) photostability was relevant to the claimed subject-matter. Going from these specific properties to the effect of photostability would also clearly change the nature of the invention, contrary to what is required by T 116/18. Hence, the board found the effect of photostability was not encompassed by the teaching of the application as filed.
Furthermore, even if it were wrongly concluded in the respondent's favour that the technical teaching of the application as filed were to encompass photostability in the sense of T 116/18, it would not do so "together with the claimed subject-matter", as required by this decision.
The respondent submitted during the oral proceedings that the present case was also in line with T 1989/19 and that it was not a requirement that the application as filed disclosed improved photostability. In that case, the board held that once the criterion of the derivability of a technical effect in the sense of G 2/21 was fulfilled, this applied equally to the improvement in this effect. The board agreed with the view expressed in T 1989/19; however in the present case, photostability was not encompassed and thus not derivable from the teaching of the application as filed in the sense of G 2/21. Furthermore, unlike in T 1989/19, the application as filed in the present case referred to three polymorphic forms in equal terms, and the present case was not one in which the purported improvement was asserted to be present for the subject-matter of the application as filed over the subject-matter disclosed in the prior art.
It followed that improved photostability of Form II as demonstrated in D32 could not be taken into account in the assessment of the technical effects achieved by the distinguishing feature.
- T 1602/21
Abstract
In T 1602/21 the opposition division had decided that the provision of a method according to claim 1 of the patent as maintained involved an inventive step. One of the differing features to closest prior art D1 was seen in the nature of adsorbent, i.e. an OH-type basic ion-exchange resin (alternative "a" in the impugned decision) or an adsorbent selected from zeolite, silica-alumina, and alumina (alternative "b" in the impugned decision), or mixtures thereof.
In the case of alternative "a", a surprising technical effect based on the disclosure of documents D30 and D32 was acknowledged – D32 being experimental data provided by the respondent during the opposition proceedings. The appellant argued, by reference to G 2/21, that D32 should not be considered for the purposes of inventive step, since it was published after the filing date of the contested patent, and since the technical effect allegedly shown therein was not mentioned in the patent. The technical effect could thus not be relied upon, and the technical problem could only be seen in the provision of an alternative, which had been solved in an obvious manner.
The board was not convinced by the appellant's above argument. The application as filed disclosed that the use of an OH-type strongly basic ion-exchange resin led to improved removal of sugar or sugar alcohol. Document D32 disclosed experimental data showing a link between the use of an OH-type strongly basic ion-exchange resin and the effect of improved removal of sugar or sugar alcohol. The board thus concluded that the effect was derivable from the application as filed, and as such the respondent could rely upon it for inventive step, even if D32 had been filed after the filing date of the contested patent (see G 2/21, headnote II).
The board further observed that the condition stated by G 2/21 that "the skilled person ... based on the application as originally filed, would derive said effect as being encompassed by the technical teaching" (board's emphasis) was not equivalent to the "gold standard" disclosure required normally for Art. 123(2) EPC. It was sufficient that the skilled person was satisfied that the advantageous technical effect was indeed achieved by the claimed solution, on the basis of the teaching of the application, and once the technical effect had been brought to its attention, possibly from another source as the application. It was not required that the technical effect relied on was also disclosed so explicitly and clearly that the skilled person would recognise it only on the basis of the application and without knowing the later evidence.