b) Decisions following G 2/21 

In T 116/18 of 28 July 2023 date: 2023-07-28 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.

The board in T 314/20 pointed out that although the board in T 116/18 of 28 July 2023 date: 2023-07-28 had stated that it was the new requirements defined by the Enlarged Board in G 2/21 that were to be applied rather than any rationale developed in the previous plausibility case law, in its interpretation of requirement (ii) of point 2 of the Order the same board had effectively adopted what it had defined in the referral as the "ab initio implausibility" standard. Nowhere in G 2/21 did the Enlarged Board 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 present board highlighted a second inference in T 116/18 date: 2023-07-28, 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. In relation to the reasoning provided in T 116/18 date: 2023-07-28 for this latter inference, 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". It was also not immediately clear to the present 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 date: 2023-07-28 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 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 (speculative applications).

The board refused the respondent’s request for a referral to the Enlarged Board , 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 there was divergence in the case law. The board found the Enlarged Board had deliberately chosen not to define the aforementioned requirements and it was thus uncertain whether the Enlarged Board 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 have led to the conclusion it reached in the case in hand.

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.

In T 1602/21 the board 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.

In T 1698/21 the respondent defined the problem as the provision of an alternative synergistic combination having an improved activity or potency on the integrase enzyme. The board considered that this alleged technical effect was based on data relating to the use of dolutegravir as monotherapy whereas the invention disclosed in the original application and claimed in the granted patent related to a combination of compounds. Thus, this effect was not relevant to the double combination claimed. Moreover, it was not encompassed by the teaching of the application as filed in the sense of G 2/21. Thus the improved potency on the integrase enzyme could not be taken into account in the definition of the technical problem.

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 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")".