G2/21: Enlarged Board of Appeal issues its decision
The much awaited decision of the Enlarged Board of Appeal concerning whether post-filing data can be used in support of a technical effect for inventive step issued today. The response to the first question posed is clear – post-filing data submitted in support of a technical effect for inventive step cannot be disregarded solely on the ground that it was not available before the filing date.
G 2/21: has anything changed?
Our latest update on G 2/21 takes a deeper view of the EB’s conclusion, how it was reached and how the Enlarged Board of Appeal responded to the questions posed in T 116/18.
Read moreConsidering whether such data should be taken into consideration, the Board of Appeal, having summarised both EPO and national case law, concluded that each case must be assessed on its merits. It considered the posed questions regarding the “plausible” and “non-implausible” approaches to the admittance of post-filing data and decided that no specific guidance could be provided. Their conclusion may be best understood from paragraphs 93 and 94 of the decision:
“93. The relevant standard for the reliance on a purported technical effect when assessing whether or not the claimed subject-matter involves an inventive step concerns the question of what the skilled person, with the common general knowledge in mind, would understand at the filing date from the application as originally filed as the technical teaching of the claimed invention. The technical effect relied upon, even at a later stage, needs to be encompassed by that technical teaching and to embody the same invention, because such an effect does not change the nature of the claimed invention.
94 Hence, a patent applicant or proprietor may 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 consider said effect as being encompassed by the technical teaching and embodied by the same originally disclosed invention.”
Some guidance may be derived from their acknowledgement “that the scope of reliance on post published evidence is much narrower under sufficiency of disclosure (Article 83 EPC) compared to the situation under inventive step (Article 56 EPC).”
The Board of Appeal expressed awareness that the criteria remain somewhat abstract but that “it is the pertinent circumstances of each case which provide the basis on which a board of appeal or other deciding body is required to judge.”
It would appear therefore appear to be a sign of “no change” in this. A more detailed analysis of the decision is available at: dycip.com/g221changes.
Press Communiqué of 23 March 2023 on decision G 2/21 of the Enlarged Board of Appeal
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