News

G2/21: Life after the decision

Posted: September 24, 2024

In G2/21, the Enlarged Board of Appeal (EBA) clarified when a technical effect can be used to support the presence of an inventive step. Technical Boards of Appeal (TBAs) are now applying G2/21. However, said implementation has been far from harmonious. Here we summarise some key decisions outlining how the Boards have been assessing inventive step in the aftermath of G2/21.

Summary of G2/21 decision

In our article of February 2022, we reviewed how the divergent case law relating to the use of post-published data in the assessment of inventive step and the questions referred to the EBA. Following the referral, the EBA decided that:

• inventive step can be established by relying on post-published data; and
• an applicant or proprietor can rely upon a technical effect for inventive step if the skilled person, having the common general knowledge in mind, and based on the application as originally filed, would derive said effect as being:
  1. encompassed by the technical teaching of the claimed invention; and
  2. embodied by the same originally disclosed invention.

Thus, the EBA seemingly provided a two-point test for when a technical effect can be relied on to support the presence of an inventive step. But how is this being implemented?

Inventive step post-G2/21

To date, and perhaps unsurprisingly, the TBA that sought clarification from the EBA (the referring TBA) has provided the most complex analysis of the EBA’s decision with respect to reliance on a technical effect to support inventive step.

The referring TBA in T 116/18 has built on the above two-point test and subsequently commented that a technical effect can be “encompassed by the technical teaching of the claimed invention” if the subject matter is “conceptually comprised” when the application is broadly interpreted, suggesting that the technical effect does not need to be literally disclosed – i.e. while useful, neither experimental evidence or a positive disclosure regarding the technical effect in the application as filed are necessary to show that the technical effect is achieved. This is in line with previous case law.

The referring TBA further stated that the technical effect is “embodied by the same originally disclosed invention if the skilled person, having their common general knowledge on the effective filing date in mind, and based on the application as filed, would have no legitimate reason to doubt that the purported technical effect can be achieved with the claimed subject-matter”. Thus, one way for third parties to attack inventive step is to provide evidence showing that the specific effect cannot be achieved over the claim scope.

As experimental evidence or a positive disclosure in support of an effect is not required, it begs the question of whether the bar for relying on an alleged effect to support inventive step has been lowered. However, the new test does seem to require that the technical effect is comprised in the teaching of the application, which arguably implies that some degree of disclosure of the effect is required in the application as filed. Thus, we still suggest including as much information or data as possible to increase the chances of being able to rely on a technical effect to support inventive step.

When applying G2/21 to the specific facts of the case in T 116/18, the referring TBA agreed with the OD that a synergistic effect could be used to establish an inventive step because it met the criteria of the two-point test stated in G2/21 and that post-published data could be used to confirm this synergy. The TBA thus agreed with the OD and dismissed the opponent’s appeal. However, in January 2024 a petition for review on this case for an alleged violation of the opponent’s right to be heard during the appeal procedure was filed. The EBA’s preliminary view is that the petition will be rejected meaning that it is likely that the patent will be maintained as granted.

Other TBA decisions that have applied G2/21 include:

• T 1891/21 – The appellant (opponent) argued that the examples of the patent did not illustrate the alleged technical effect (increasing coulombic efficiency). However, the TBA deemed the examples as suitable support for the proposed technical effect, particularly as the appellant had not provided counter-evidence to the contrary. A further submission from the respondent (patentee), included a calculation of additional values of those in the examples, which the TBA felt explicitly confirmed the teachings of the examples of the patent. Therefore, the Board found that the requirements of the two-point test laid down in G2/21, and thus inventive step, were met. This decision highlights that once the two-point test laid down in G2/21 is satisfied, the burden of proof seems to lie with the party asserting that a technical effect is not present or achieved.
• T 873/21 – The appellant (applicant) argued that a novel combination of active agents was associated with a therapeutic effect (improved insulin sensitivity) and that this would have been expected at the priority date as both compounds and their uses were known at the relevant date. Further, the appellant argued that this effect was described in the application as filed and that post-published document D16 only provided a quantification of the obtained improvement. The TBA agreed with the appellant that the technical effect could be taken into account because each monotherapy was known to be useful for treating metabolic disorders meaning that the two-step test of G2/21 was satisfied. Thus, inventive step was acknowledged. This decision provides useful points for arguing that a new combination of known monotherapies has a beneficial, synergistic, technical effect as each monotherapy was known to be useful in disease treatment.
• T 258/21 – the TBA observed that the original application did not provide any experimental data and that no technical effect directly linked to the identified distinguishing feature had been demonstrated in the application as filed. The Board held that the technical effect put forward by the appellant (applicant) was neither contemplated nor suggested by the application and thus that it could not be taken into account for the assessment of inventive step. The TBA thus found that the second medical use-type invention did not meet the test laid down in G2/21. The bar regarding the level of disclosure needed to support the inventive step of a second medical use claim, particularly where the distinction lies in the specific claimed therapeutic indication, new patient sub-population, etc., is often higher than product claims. It seems that the Boards are continuing to adopt this approach. This decision also highlights the detail required in post-published documents to support an inventive step, as both post-published supporting documents did not provide detailed results or methodology leading to the Board disregarding these documents.

Practice points

While it may appear that the TBAs are taking a more applicant/patentee-friendly approach, others still seem to be placing at least a vague reliance on some form of teaching in the application as filed to render the alleged technical effect credible – particularly with respect to second medical use claims. No doubt there will be further decisions on this matter.

Our recommendation still remains to include as much information demonstrating and/or explaining the improvements that your invention has over the art at the drafting stage. This should smoothen the sometimes rocky road to acknowledgement of inventive step at the EPO.

If you have any questions, please contact your usual Forresters’ attorney.