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")".