In the referral case G2/21, the Enlarged Board of Appeal of the European Patent Office (EPO) established last year new - albeit still abstract - requirements for being able to rely on technical effects based on post-published test results when discussing inventive step. In this context, the Enlarged Board of Appeal explicitly turns away from the previously frequently used term "plausibility". The new requirements now call for that the technical effect must (i) be encompassed by the technical teaching AND (ii) be embodied by the same original invention.
The grounds of the Board of Appeal responsible in the referral case (T 116/18) now provide a first insight into the practical implementation. According to the Board, it is irrelevant whether the technical effect was explicitly mentioned in the application documents or whether a specific example is included. The decisive factor is that a person skilled in the art considers the technical effect to be necessarily relevant for the claimed subject matter. In addition, based on his relevant technical knowledge and the original application documents, he/she must have no serious doubt that the technical effect shown can be achieved with the claimed subject matter.
This understanding comes very close to the basic idea of a technical effect previously described as "plausible". From the point of view of a patent applicant or proprietor, this decision gives reason to hope that the EPO will continue to find a balance between the minimum requirements for the description of the invention and its technical effects on the one hand and the effort to be made for drafting a patent application with regard to the test results to be submitted on the other hand. From an opponent's point of view, the effort required to find suitable evidence which sufficiently demonstrates that the technical effect is not necessarily relevant to the claimed subject-matter or that there are serious doubts as to whether the claimed technical effect will be achieved with the claimed subject-matter will increase.
Questions?
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