Following last year’s landmark EPO Enlarged Board of Appeal (EBA) decision in G2/21 relating to the admissibility of post-filed data to support inventive step, the opponent in that case has filed a relatively rare petition for review, in response to the Technical Board of Appeal (TBA) decision to maintain the patent as granted. Petitions for review represent the final attempt to have an issue considered by the EPO. They are rarely filed, and even more rarely granted.
This could mean further clarity on the legal threshold test to determine post-filed data admissibility at the EPO.
Read on for more details of the next steps in this saga.
What’s happened already?
As a brief summary, the TBA in T116/18 saw a divergence in EPO case law relating to the use of post-filed data, and referred certain questions to the EBA in October 2021. The EBA responded with two orders in their decision, which issued on 23 March 2023. The second of these orders was a new test for determining when a patent applicant can rely on post-filed data to support inventive step. After the case was remitted back to the TBA following the G2/21 decision, the TBA applied the new test and decided to maintain the patent as granted on 28 July 2023. The TBA issued their written decision, which included their reasons, at the end of November 2023.
What’s happened now?
The opponent in T116/18 has now filed a petition for review, on the grounds that a fundamental violation of their right to be heard allegedly occurred (Art. 112a(2)(c) EPC). In their petition, they allege they did not have the opportunity to comment on the TBA’s application of the EBA’s new test to determine whether the conditions of order No. 2 of G2/21 had been met. The opponent claims the application of this new test was presented for the first time in the TBA’s written decision, meaning they were unable to argue their position on this during the appeal proceedings ahead of the decision (e.g. at an oral hearing).
The European Patent Convention (EPC) stipulates petitions for review are only admissible where the objection was raised during the appeal proceedings. These ended when the TBA gave their decision during oral proceedings in July 2023, and the opponent did not raise an objection at that time. However, there is an exception in the case that such an objection could not be raised during those appeal proceedings (Rule 106 EPC), for example “if the alleged procedural defect becomes apparent to the parties only through the written reasons for the decision” (R3/10). This appears to be the situation here, since the opponent alleges it was only on reading the written decision from the TBA did they realise the alleged violation had occurred.
What’s the basis of their objection?
Order No. 2 of G2/21 was as follows:
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 derive said effect as being encompassed by the technical teaching and embodied by the same originally disclosed invention.
One might argue this is most similar to the ab initio plausibility standard ("plausibility to be proven"), which required that the skilled person at the relevant date would have considered the technical effect relied upon by the applicant for inventive step to be “plausible” (or as we say now, “encompassed by the technical teaching and embodied by the same originally disclosed invention”) on the basis of the content of the application (and the common general knowledge).
However, the TBA in T116/18 reframed this as the following question (paragraph 11.11 of the Reasons for the Decision in T116/18):
Would the skilled person, having the common general knowledge on the filing date in mind, and based on the application as filed, have legitimate reason to doubt that the technical teaching at issue, i.e. the purported technical effect together with the claimed subject-matter, is an embodiment of the originally disclosed invention, i.e. the broadest technical teaching of the application as filed?
This reframing could be considered to steer the test towards ab initio implausibility standard ("plausibility is assumed"), which allowed an applicant to rely on a technical effect provided the skilled person at the relevant date would have seen no reason to consider the effect implausible (or not “encompassed by the technical teaching and embodied by the same originally disclosed invention”).
The opponent therefore argues that the TBA applied the test too leniently.
What’s next?
The EBA will consider the admissibility and allowability of the petition. We may be waiting a year or more for the result, with the number of petitions being filed outstripping the number of petitions settled in recent years (25 new petitions filed in 2022, but only 9 settled, with the total number pending standing at 45).
If successful, this petition for review could re-open one of the most interesting aspects of EPO case law we have seen in recent years, pushing for a further clarification in the use of post-filed data to support inventive step. However, we note the historically low success rate of petitions for review (less than 6%), so we will watch this development with interest. In the meantime, we expect the Divisions and Board of Appeal of the EPO to continue applying G2/21, regardless of how this petition might ultimately be decided.
If you have any questions, please contact Tom Leonard, Maddie Humphrey, or your usual Kilburn & Strode advisor.
I’d like to know more, please provide further detail…
In more detail, the opponent has argued the alleged reframing of order No. 2 of G2/21 by the TBA had the following implications:
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The "would" of order No. 2 of G2/21 is not taken into consideration.
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"Technical teaching" is defined as corresponding to "the purported technical effect together with the claimed subject-matter". Whereas the EBA in G2/21 defined "technical teaching" as "what the skilled person, with the common general knowledge in mind, understands at the filing date from the application as originally filed" (paragraph 71 of the Reasons for Decision).
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"The originally disclosed invention" is defined as corresponding to "the broadest technical teaching of the application as filed".
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The test actually applied by the TBA stipulates that any purported technical effect may give rise to a patent, provided that it can be considered, together with the claimed subject-matter, an embodiment of the broadest technical teaching of the application as filed.
The opponent believes the TBA’s reframing of order No. 2 of G2/21 lead to an adverse decision in T116/18, as it resulted in a reliance on the technical effect. Additionally, the opponent states multiple of their arguments were misunderstood when described in the TBA's decision. As these arguments belong to the grounds for decision, the opponent states they should have the opportunity to present their comments on the misunderstandings.
You can read the TBA’s decision here. You can read the petition for review from the opponent here. You can read G2/21 here. You can read some of our previous articles on this topic here, here and here.
If you have any questions or for more information, please contact Maddie Humphrey, Tom Leonard or your usual Kilburn & Strode advisor.