R 0003/22 - Successful petition for review

Key points

•  This is the 10th successful petition for review. The petition was filed on 30.11.2021, written decision was issued on 29.11.2022.
• The applicant/appellant filed a withdrawal of the appeal on 28.09.2021 and filed a retraction of the withdrawal on 29.09.2021. A notice of closure of the appeal proceedings was issued on 01.10.2021. The appellant then substantiates the request of 29.09.2021 as a request for correction under Rule 139 with a letter of 05.10.2021 and receives a communication from the Registrar on 05.10.2021 stating that the proceedings are terminated. The appellant requested a decision on 15.11.2021 and filed a petition for review on 29.11.2021 against the communication of the Registrar of 05.10.2021. 
• A divisional application was filed on 08.10.2021. 
• The Enlarged Board: "The Enlarged Board of Appeal concurs with the petitioner that it is admissible to file a petition for review against the decision of the Board as communicated by the registrar on 5 October 2021. Determining whether there is a decision depends on the substance of the document content and not its form. The decisive question is whether the document at issue is to be understood by its addressee as a final determination of substantive or procedural issues by the competent organ of the EPO (see T 165/07). 
• "The Enlarged Board interprets the Registrar's communication of 5 October 2021 as a decision in which the Board implicitly decided on the appeal [namely: "The appeal proceedings have come to an end and will not be re-opened"], while not deciding on the request for correction. A ruling of this kind would not normally be considered to be a decision within the meaning of the EPC. Even after such a determination, the proceedings may be resumed at any time if it transpires, for example, that the determination was made in error. However, in order to avoid gaps in legal protection, an exception must apply in the situation where a board of appeal expressly indicates that it considers the appeal proceedings to be closed and refuses to deal with the case further."
• Note that the EBA considers the communication of the Registrar as a decision taken by/on behalf of the Boards. See OJ EPO 2008, Supplement 1, 49: 
• "The request for correction, i.e. the retraction of the withdrawal of the appeal filed after its withdrawal is a relevant request within the meaning of Rule 104(b) EPC for the purposes of Article 112a(2)(d) EPC. According to the case law of the Boards of Appeal on Rule 139 EPC (see Case Law of the Boards of Appeal of the EPO, 10**(th) edition 2022, V.A.7.3.7), the success of such a request cannot be ruled out a priori, and if the request is successful, a decision on the merits of the appeal would be possible."
• "For this reason, the Enlarged Board holds that the Board's refusal to decide on the request for correction under Rule 139 EPC in the present case is a fundamental procedural defect within the meaning of Article 112a(2)(d) EPC [in conjunction with Rule 104(b), "decided on the appeal without deciding on a request relevant to that decision"], and the Enlarged Board holds that the petition is allowable."
• As the petition is allowable and the proceedings before the Board of Appeal must be reopened (Rule 108(3) EPC) the fee for the petition for review is to be reimbursed (Rule 110 EPC).

The successful petitions for review are now: The successful petitions are now: R3/22,  R 5/19 , R 4/17 , R 3/15, R 2/14 , R 15/11, R 3/10, R 7/09 , R 21/11 , R 16/13.

 

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 2269/19 - No review admissibility under Art. 12(4) RPBA 2007

Key points

• "Both appellant [opponent] O3 and respondent [opponent]  O1 relied on document D41 in their respective replies to appellant P's grounds of appeal filed on 4 November 2019. Appellant [proprietor] P contested the admittance of D41 into the appeal proceedings. Following the transitional provisions set out in Article 25(2) RPBA 2020, Article 12(4) RPBA 2007 is applicable. Article 12(4) RPBA 2007 gives the Board discretion not to admit, on appeal, facts and evidence which could have been presented or were not admitted in the opposition proceedings" (and any such submissions not complying with Art. 12(2) RPBA 2007, it may be added). 
• " D41 had already been filed during the first instance proceedings. The opposition division did not take any decision not to admit this document. Hence, D41 is neither a document which could have been presented in the first instance proceedings (i.e. but was not), nor a document which was not admitted in the first instance proceedings. Thus the discretionary power not to admit evidence under Article 12(4) RPBA 2007 does not apply to D41. Accordingly, D41 was taken into account in the appeal proceedings."
• As a comment, this is of course a clear difference with Art. 12(4) RPBA 2020 where the Board would still have discretionary power if the request was filed during the first instance proceedings, but not admissibly filed, i.e. if D41 would have been filed late in the first instance proceedings. 
• As a further comment, this reasoning of the Board seems correct, though there seem to be not many decisions on this particular point. See e.g. T 0882/19 r. 3.4
• Note that the auxiliary request can still be held inadmissible if not substantiated in the initial appeal submissions of the patentee.

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 3097/19 - On the need to adapt the description

Key points

• In this examination appeal, the Board finds an auxiliary request allowable, but the applicant did not file an adapted description.
• The Board: "The Board deems it to be an elementary requirement of a patent as a legal title that its extent of protection can be determined precisely. In the Board's view, the clarity and conciseness requirements in Article 84 ultimately serve that purpose, but they are not sufficient to ensure it. To mark this distinction, the Board prefers to talk about the scope and extent of protection being "precisely determined" rather than being "clear".
• " under a systematic interpretation of the EPC, the function of the claims, as defined in Article 84 EPC, is only achieved when the potentially conferred scope of protection can be determined precisely. Whe­ther this is the case for a specific patent application (or an amended patent) can only be made with due consideration of the description."
• "if a claim is directed to something which is different than that described to be the invention, then the application for grant is self-contradictory, and it can be questioned for which matter the protection is actually sought. For the scope of protection to be determined precisely, the definition provided by the claims of the matter for which protection is sought must therefore be consistent with the definition of the invention provided by its description"
• "the Board disagrees with the conclusions in T 1989/18, but rather concurs with the conclusions expressed in, especially, T 1024/18 and T 2766/17. It also disagrees with the conclusions of T 2194/19 (catchword), inasmuch as it considers necessary that embodiments said to be "of the invention" must fall within the scope of the claims", i.e. (as I understand it) the present Board considers the phrase "embodiments of the invention" in the description to mean, to the skilled person, "embodiments falling within the scope of the claims".
• The Board acknowledges that  "the often {but incorrectly, see *} expressed requirement that the claims be clear "from the wording of the claims alone" appears to be hardly compatible with the idea {underlying the Boards reasoning} that the patent (application) must be read "as a whole"" (the curly brackets {} indicating my analysis)
• * - "The Board does not agree with a verbatim reading of the former requirement, nor, without further qualification, with the statement of T 454/89 (reasons 4.1 (vii) as cited in T 1989/18 (reasons 4) that "Claims must be clear in themselves when being read with the normal skills including the knowledge about the prior art, but not including any knowledge derived from the descrip­tion of the patent application or the amended patent"."
• "The Board considers that these statements cannot literally be correct, for the reasons given above, and rather concurs with the qualification in the Guidelines for Examination, F-IV, 4.1, according to which "the meaning of the terms of a claim must, as far as possible, be clear for the person skilled in the art from the wording of the claim alone".
• "That, however, the claims should be, as far as possible, clear from their wording alone, is an expression of the desire, in the interest of legal certainty (see G 1/04, reasons 5), that the divergence of post-grant jurisprudence be limited (see also T 1817/14, reasons 7.4 and 7.5)."
• "in the case at hand the way the invention is described in the description is inconsistent with the wording of the claims. As a consequence, the Board is convinced that the scope of protection cannot be determined precisely, due in particular to conflicting statements as to which features constitute the invention (see point 23a) and b)) and to the sweeping statement that new embodiments of the invention can be obtained by combining technical means (see 23 c)). Therefore, in the absence of an adapted description, the requirements of Article 84 EPC are not met."
• The Board, in the headnote: "The purpose of the claims to define the matter for which protection is sought (Article 84 EPC) imparts requirements on the application as a whole, in addition to the express requirements that the claims be clear, concise and supported by the description. The Board deems it to be an elementary requirement of a patent as a legal title that its extent of protection can be determined precisely. Whether this is the case for a specific patent application (or an amended patent) can only be decided with due consideration of the description. Claims and description do not precisely define the matter for which protection is sought if they contradict each other"

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 0938/20 - Making use of the 10d period to file 100+ AR's

Key points

• The summons for oral proceedings was dated 07.10.2021.
• On 12.10.2021,  the patentee filed auxiliary requests 25 to 139. The operative main request was filed as auxiliary request 105.
• The Board: " The present request was submitted on 12 October 2021, i.e. shortly before notification of the summons to oral proceedings was deemed to have been delivered (Rule 126 EPC). Therefore Article 13(1) RPBA 2020 applies." 
• " The request is a reply to an objection raised under Article 83 EPC by opponent 2 in their reply to the appeal concerning enablement over the whole scope. This objection was not part of the impugned decision, but was admissibly raised within the meaning of Article 12(4) RPBA 2020 in opponent 2's notice of opposition. 
• " However, it had apparently not been discussed during the oral proceedings before the opposition division, although said objection would equally apply to the then-auxiliary request 4. (...) Therefore in the case in hand it cannot be clearly established whether the objection was indeed maintained as required by Article 12(4) RPBA 2020. In view of this, the board considers that it can be accepted that the objection was re-introduced with opponent 2's reply to the appeal. Although it took some time for the appellant to react, the request is considered a fair reaction to opponent 2's objection independently of the fact that many other requests had been filed. The request could have been filed before the opposition division, but, taking into account the total number of objections raised by the opponents in opposition proceedings, it appears that there is no clear indication that it should have been filed in addition to the numerous requests filed before the opposition division, since the opposition division apparently did not consider this objection critical for the requirements of Article 83 EPC. Therefore there is no reason not to admit it when considering Article 12(6) RPBA 2020" [which also applies under Art. 13(1) RPBA 2020] 
• " The request is not detrimental to procedural economy, but to the contrary in the case at hand helped to streamline the proceedings and led to an allowable request as set out below. ' 
• "  the board notes that "giving rise to new objections" is understood to mean that the appellant has to show that prima facie no valid new objection is recognisable (see Supplementary publication 2, Official Journal 2020, RPBA 2020, Table setting out the amendments to the RPBA and the explanatory remarks). It is not understood to mean that any new objection raised by the opponents - whether justified or not - renders the request inadmissible. In the present case it means in particular with respect to Article 123(2) EPC that a basis for the amendment should be easily recognisable." 
• " As to the question of convergence of the (former) requests, the board accepts that in the case at issue, where an extremely large number of objections of different kinds were raised against all the requests on file, convergence was particularly difficult to achieve and under the given circumstances should not be used as the only criterion for denying admissibility of this request. It may be noted in this context that a series of requests that are drafted in defence against a single objection are expected to converge, but equality of arms would be infringed if the opponent was free to raise a multitude of diverging objections, whereas the patentee was restricted to only one line of defence against all of these. In view of all these considerations, the board exercises its discretion to admit the request into the proceedings.'
• Turning to sufficiency: "It is well-established case law that an objection of insufficient disclosure cannot legitimately be based on an argument that the patent does not enable a skilled person to achieve a technical effect which is not defined in the claim (see T 1311/15, Reasons 5.2). The effect is however of relevance to the question of inventive step (see point 7.5 below)."
• Turning to inventive step: " Therefore the board accepts that there is no convincing evidence from the opponents' side showing that a sheet obtained by the process of D9b has as good weldability as a sheet obtained according to the claimed process. In other words, due to the lack of evidence to the contrary it is accepted that the problem posed is solved. The problem does not need to be redefined in less-ambitious terms."
• In this case, the patent included an example showing certain good weldability values, and a comparative example. The burden of proof was on the opponent to show that the cited prior art D9 had already achieved the same weldability as the claimed invention. 
• " the specific combination of heating conditions and pre-coating for good weldability is not rendered obvious by the prior art. The subject-matter of claim 1 of the main request meets the requirements of Article 56 EPC."

• 
  

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 2194/19 - On the need (or not) to adapt the description

Key points

• Board 3.5.03 takes position and is of the view that if the description mentions "embodiments" which are outside the scope of the claims, the description does not need to be amended to remove such "embodiments" or to change them into "embodiments not according to the invention" .
• The Board: " First, the board is not convinced that, according to the EPC, the "invention" is necessarily and always to be equated with the "invention claimed" (see e.g. T 944/15, Reasons 17)." 
• T 944/15 is the case where a computer program was held to be excluded from patentability under Art. 53(c) which specifies that "methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body" are excluded from patentability.
• T 944/15, cited r.17:  "[claims] do not, in themselves, define what the invention is. Instead, it is the corresponding teaching in the application which does that" 
• Compare Article 52(1) EPC: "European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application". 
• The Examining Division's analysis was: "the examining division equated the term "embodiment" with subject-matter that has to fall "within the scope of the invention as defined by the claims". 
• " Secondly, this board takes issue with the conclusion that the requirement that the claims are to be supported by the description (Article 84, second sentence, EPC) necessarily means that all the "embodiments" of the description of a patent application have to be covered by the (independent) claims, i.e. that all the embodiments must fall within the scope of those claims. This conclusion cannot be derived from the EPC. It can also not be derived from the jurisprudence of the Boards of Appeal, according to which merely inconsistencies or contradictions between the claims and the underlying description are to be avoided in that context (see e.g. T 1808/06, Reasons 2; T 2293/18, Reasons 3.3.5). [....] The mere indication that the embodiment does not or no longer fall under the respective claim(s) is not sufficient in this regard." 
•  T 1806/06 r.2: " In order to meet the requirement of Article 84 EPC that the claims have to be supported by the description, the adaptation of the description to amended claims must be performed carefully in order to avoid inconsistencies between the claims and the description/drawings which could render the scope of the claims unclear. Any disclosure in the description and/or drawings inconsistent with the amended subject-matter should normally be excised. Reference to embodiments no longer covered by amended claims must be deleted, unless these embodiments can reasonably be considered to be useful for highlighting specific aspects of the amended subject-matter. In such a case, the fact that an embodiment is not covered by the claims must be prominently stated."
• The Board seems to cite T 1806/06 at the correct place in its reasoning: namely for the position that "inconsistencies or contradictions between the claims and the underlying description are to be avoided" (which is indeed what T 1806/06 says). The Board, interestingly, cites no earlier case law for it's analysis that "The mere [fact] that the embodiment does not or no longer fall under the respective claim(s) is not sufficient in this regard".  Nor is any explanation or supporting reasoning given for this view of the Board (in para. 6.2.2 dealing with the matter).
• Als on T 2293/18, the Board required an amendment of the description because, essentially, "Folglich liegt eine Unstimmigkeit zwischen dem Anspruch 1 und Teilen der Beschreibung vor, weil beim Fachmann der Eindruck erweckt wird, dass die Beschreibung Wege zur Ausführung der Erfindung offenbart, die aber nicht unter den Wortlaut des Anspruchs fallen." 

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 2179/16 - Waiver of attack

Key points

•  The opponent argues that the claim at issue is not inventive over D10. The Board decides that the claim is inventive over D10.
• With the SoG, the opponent had also submitted an attack using D2 as the closest prior art.
• Admissibility of the attack is to be decided under Article 12(4) RPBA 2007.
• The attack "had initially been submitted with the notice of opposition at the outset of opposition proceedings. At that point in time, those objections were directed against the claims of the granted patent, which were the basis for the main request before the opposition division."
• According to Article 12(4) RPBA 2007, the board has the discretion to hold inadmissible inter alia facts which could have been presented in opposition proceedings. It is established case law that this provision also applies to facts (attacks) which were submitted and subsequently withdrawn during the first instance proceedings. Article 12(6)(s.2) RPBA 2020 uses "were no longer maintained".
• The AR was filed shortly before the hearing before the OD. The opponent did not comment in writing on it. 
• Inventive step was discussed during the oral proceedings before the OD. "Thus, at the outset of the discussion on inventive step, the parties were not requested to limit their oral submissions on inventive step in any way, but were simply requested to provide their arguments."
• "There then ensued a discussion starting only from D10 as closest prior art."
  
• "Specifically, the minutes (page 11, "12:30") state the following: "The parties having indicated that they have nothing more to add, the Chairman announces a break of 15 minutes to deliberate on the question of inventive step". Hence, the chair of the opposition division, having opened the discussion in relation to inventive step and having heard arguments from the appellant only in relation to D10 as closest prior art, subsequently confirmed with the parties whether there was anything further to add to their submissions. In the absence of any further submissions, it can only have been concluded that the parties had nothing to add. This in turn can only mean that the further objections that had previously been raised against the then main request, were not pursued or raised against the then first auxiliary request."
• It seems that the Board here identifies a waiver of the attack. Note, this waiver is based on an action of the opponent, namely, indicating that they had nothing more to add, in combination with the attack being on file. However, if the auxiliary request had significant claim amendments (for inventive step) compared to the claims as granted, it may also be a case of forfeiture, in the sense that the opponent failed to present the attack, instead of presenting the attack and then abandoning it.
• After the break, "oral proceedings were resumed, and the chair announced the conclusion that the first auxiliary request met the requirements of Article 56 EPC. At this point in the oral proceedings, it would still not have been too late for the appellant to have raised the further objections had it so desired, or at the very least, to have enquired with the opposition division as to whether said further objections had been taken into account in reaching its conclusion. However, the appellant remained silent."
• Practice point: if a conclusion is announced, the debate can be reopened. If a decision is announced, not. 
• "In view of the above, there can be no doubt that the further objections were not pursued or raised against the then first auxiliary request during the opposition proceedings."
• "By not pursuing or raising these objections before the opposition division and introducing them for the first time before the board, the appellant effectively avoided a decision by the opposition division on the merits of these objections. Their admittance would therefore oblige the board to decide for the first time on their relevance."
• As a comment, Art. 12(4) RPBA  20007 speaks only of the power of the Board to hold such attacks inadmissible. Article 12(6)(s.2) RPBA 2020 likewise provides for an exception (i.e. admissibility) "unless the circumstances of the appeal case justify their admittance". For this exercise of discretion, it may matter whether the attack was waived or forfeited before the OD (cf. USA law, see here).
• The case is similar to T 1958/19, also in the outcome. 
• See, however, also R 5/19, r.3.6, in translation: "The respondent took the view that the opponent's representative should have expressly repeated written submissions - that is, the one on inventive step in the grounds of appeal - in the oral proceedings so that they could be taken into account in the board's decision. After he had not done that, an implicit waiver of its consideration can be assumed. This can not be followed. The view that written submissions would have to be repeated at the oral hearing in order to be taken into account would contradict the principle of the written procedure already mentioned in the notice of summons of the Enlarged Board of Appeal mentioned above in the relevant part." 

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 0698/19 - Technical effect must be derivable from the application as a whole

Key points

• The applicant of the application at issue is Swiss Reinsurance Company Ltd.
  
•  Board 3.4.03 in the headnote: " If non-technical features have both a technical and a non-technical effect, the technical effect must be taken into account when assessing inventive step, but the technical effect must be clearly derivable from the application as a whole".
• This statement appears to combine two distinct rules: 1) "If non-technical features have both a technical and a non-technical effect, the technical effect must be taken into account when assessing inventive step" and 2) a  "technical effect must be clearly derivable from the application as a whole".
• The arguments of the applicant: " Prior to automation, the handling of insured loss cases was handled by an insurance agent who determined the amount of loss to be reimbursed based on similar claims and the insurance policy. In the 1960s, attempts were made to automate the handling of claims by a computer. For this purpose, the procedures were parameterized, which led to an efficient (but less accurate) claims handling. However, there were parts that could not be parameterized. The present procedure solved this problem by automating these non-parameterized parts through pattern matching with historical data by use of seamless integration. The invention represented the complete automation of an insurance premium payment. Automation was technical as such and had a technical effect." 
• The Board: " Automation is admittedly technical in itself. This is inherent in the very fact that the method runs on a computer. The board agrees with the Appellant that in the present case technical and non-technical features are interwoven and that generally non-technical features can have a technical effect. If non-technical features have both a technical and a non-technical effect, the technical effect must be taken into account when assessing inventive step, but the technical effect must be clearly derivable from the application as a whole." 
• " The Board is not persuaded either that steps (b) to (d) in combination  have a technical effect, i.e. improving the stability of the automated system of the invention, for the following reasons."
• "Disclosure as to how the algorithm is implemented in practice must be provided in order to give evidence that the algorithm has any proved further technical effect with respect to known algorithms and that it provides an improvement over the prior art. The present invention has the object to provide a stable system. However, as discussed above, no details are given why the proposed system should be considered to provide better stability than any other system, for example, how and at which level improved stability or accuracy of the algorithm is achieved, which kind of data is used for pattern matching, how historical data is selected, prepared and compared, and which parameters are matched. The only data provided in the application is pure economical data (see e.g. Fig. 3)."
• Note, " The system should be stable and "give basis to better investment grounds for partners and clients supporting the system" (description, page 3, lines 28-33)." The term 'stability' of the automated insurance system may refer, possibly, to financial stability, but the Board's decision does not comment on that point.
• "To summarise, any further technical considerations or effect must be derivable from the application as a whole and the claims must comprise the specific features which contribute to the further technical effect of the invention, ... "
• The Board adds: "... since it must be made clear to third parties what the technical part of the invention is, and the technically skilled person needs these details to carry out the invention (Article 83 EPC). This is not the case for present claim 1." 
• As a comment, it may also be said that an inventive step is to be based on features specified in the claim and the technical effect provided by those features (if any).

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

G 2/21 - The preliminary opinion (and Ariad and Toolgen)

Key points

• The Enlarged Board has issued a preliminary opinion in referral G 2/21. This opinion is of course non-binding. It was naturally discussed on numerous weblogs already (e.g. here).
• The Enlarged Board, in the preliminary opinion: "the core issue rests with the question of what the skilled person, with the common general knowledge in mind, understands at the filing date from the application as originally filed as the technical teaching of the claimed invention. The technical effect relied upon [for inventive step],  even at a later stage, needs to be encompassed by that technical teaching and to embody the same invention." (r.15)
• As a comment, the Board here seems to  formulate the requirement that a technical effect, which is invoked by the patentee (or applicant) in the assessment of inventive step according to the problem-solution approach, needs to be "encompassed by [the] technical teaching [of the application as filed]", wherein said technical teaching is "what the skilled person, with the common general knowledge in mind, understands at the filing date from the application as originally filed as the technical teaching of the claimed invention" 
• This rule appears to be an elaboration of the established line of case law that "as a matter of principle, any effect provided by the invention may be used as a basis for reformulating the technical problem, as long as that effect is derivable from the application as filed (T 452/05, ...) (CLBA I.D.4.4.2); see also T 13/84: "A reformulation of the problem which then may become necessary is not precluded [...] if the problem could be deduced by the person skilled in the art from the application as filed when considered in the light of the [closest prior art]." The Enlarged Board seems to rephrase and refine "derivable"  and "could be deduced"  in terms of the technical teaching of the application.
• The technical effect invoked by the patentee (i.e. "relied upon") also needs to "embody the same invention", according to the above-cited part of the preliminary opinion.  I understand this requirement to refer to the invention as the skilled person understands it from the application as filed (i.e. not necessarily the same invention as claimed in the application as filed). The phrase "the same invention" is (probably) not used here in the sense of "the same subject matter" (as it was in G2/98) since G 2/21 is about inventive step and not about Article 123(2).
  
• see CLBA I.D.4.4.2: "In relation to new effects it was not permissible to change the nature of the invention".
• These requirements are tied to the application as filed and the skilled person's common general knowledge at the filing date.
• To cite Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010): “the test [for possession/written description] requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.”
• These requirements are probably to be applied in addition to, and distinct from, the requirement of T939/92 r.2.6 that a technical effect must be credibly achieved over (substantially) the entire claim.
• The Enlarged Board: "It is then on the basis of the application documents and this technical teaching that a purported technical effect relied upon for inventive step is to be assessed as to whether the skilled person, having the common general knowledge in mind, would have had any significant reason to doubt it."
• " In the absence of any such doubts, the reliance on post-published evidence, such as experimental data, for the purported technical effect would seem to serve as a potential source for a deciding body to conclude whether or not it is convinced of said technical effect when deciding on the inventiveness of the claimed subject-matter." 
• The Enlarged Board here seems to confirm the main rule that post-published evidence can be used to show that the effect is actually achieved (over the entire claim), cf. T939/92. 
• The Enlarged Board: " However, whether such [post-published] evidence could also successfully be relied upon in the event that the skilled person, on the basis of the application as originally filed together with the common general knowledge, had significant doubts in respect of the purported technical effect, appears questionable." 
• The Enlarged Board here possibly conveys that post-published evidence is, as a general rule, not suitable to show what the skilled person would consider as the technical teaching of the patent application "on the basis of the application as originally filed together with the common general knowledge" (i.e. as of the filing date). This observation seems as such independent of the existence, or not, of significant doubts.
• To give a noteworthy example of possible suitable post-published evidence was recently given in one of the CRISPR-Cas interference cases: 
  "the [PTAB] considered the opinion of the peer reviewers of the eLife manuscript, that: "This excellent paper [note, this paper was published a day after filing provisional patent application P3] demonstrates the capability of a method based on the bacterial CRISPR-Cas system to introduce targeted, mutagenic double-strand breaks into human chromosomal DNA. (...)" The Board concludes that "[t]hus, the reviewers, persons of ordinary skill in the art at the time CVC P3 was filed, considered the gels depicted in Figures 38B and 36E [of the manuscript, but also included in the patent application] to contribute to evidence of a CRISPR-Cas9 system that successfully cleaved DNA within eukaryotic cells, noting 'the paper demonstrates' this and the study 'show[s]' it.  ... the Board emphasizes that the possession test requires "an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art" (emphasis in opinion) [citing Ariad, see above]. The similarity of the disclosure in P3 and the eLife publication, and the publication reviewer's assessment of the science disclosed therein, was sufficient to convince the Board that the CVC inventors possessed the invention and were entitled to priority benefit to the P3 provisional application. " (source: PatentDocs 23.10.2022) (I'm not entirely sure if contemporaneous non-published documents such as peer review comments are post-published evidence in the sense of G2/21).
• Perhaps it can be said that a technical effect is not a part of the technical teaching of the application as filed, even if it is explicitly (or verbatim) stated in the application as filed, if the skilled person would have had significant doubts about that technical effect on the filing date and on the basis of (only) the application as filed and his/her common general knowledge at that date. This technical effect can then not be invoked under the PSA.
• The burden to show the significant doubts will be on the opponent but the initial burden to show the required technical teaching will be on the patentee, it seems to me.
• An example would be a patent application stating that 'the inventive compound are effective against [long list of all kinds of diseases]'. The application in such a case states verbatim that the compound works, but that may be no technical teaching in the sense of the preliminary opinion. 
• The Enlarged Board seems to indicate that the above-discussed rules, as stated in the preliminary opinion,  are not rules pertaining to the admissibility of the evidence. The Enlarged Board, as a preliminary remark, observes that "the principle of free evaluation of evidence [under Article 117 EPC] does not appear to allow disregarding evidence per se insofar as it is submitted and relied upon by a party in support of an inference which is challenged and is decisive for the final decision" (without prejudice to the discretionary power to hold late-filed evidence inadmissible, it may be added). 

EPO 

https://register.epo.org/application?documentId=L95QJ8WQRL3OUXE&number=EP12002626&lng=en&npl=false 

Text of the preliminary opinion below the jump.

T 1031/00 - Novelty and phase III clinical trial announcement

Key points

• Perhaps I will post more than once a week.
•  An old decision today. Cited only once, not even for the point discussed below, which is still interesting in my view.
  
• " Claim 1 is directed to the first therapeutic application of (-) amlodipine, namely the treatment of hypertension." 
• " Thus for novelty purposes it has to be established whether or not a therapeutic application has already been disclosed in the available prior art for (-) amlodipine." 
• " [D3] shows the ability of racemic amlodipine and of (-) and (+) amlodipine to inhibit calcium ion influx into rat aorta tissue in vitro as indicative of their effectiveness in the treatment of hypertension and angina" 
• D3 " also discloses that amlodipine was then undergoing phase III clinical trials for hypertension and angina and that in vitro evaluation of the enantiomers of amlodipine shows the (-) isomer to be twice as active as the enantiomeric mixture in the rat aorta, the (+) isomer being 1000 times less active" 
• " the patent application in suit it is stated that the (-) isomer of amlodipine is an antihypertensive agent for treating human (claim 1). However, in spite of the numerous examples in the description, only one deals with hypertension but without going further than in vitro experiments. Therefore, the description provides no further evidence or data showing the actual antihypertensive effect of the (-) isomer of amlodipine in humans or animals than did the prior art document [D3]."
•  " in the absence, in the patent application as originally filed, of any data providing additional technical information in relation to the actual treatment of hypertension in humans or animals compared with the disclosure in the prior art document [D3], it must be concluded that the subject-matter of the patent application is anticipated by the disclosure in that document, ie document [D3] discloses the same "therapeutic application" as the present application." 
• " According to the appellant [applicant], only the disclosure of an actual therapeutic treatment in a prior art document could be novelty destroying for the subject-matter of a claim drafted in the first [or second] medical use form." 
• " In fact, the Board agrees with both authorities cited that the disclosure of an actual therapeutic treatment for a known substance in a prior art document would be novelty destroying for a claimed first medical use of the same substance. And the Board could also agree with the [applicant's arguments] for cases where, according to the particular circumstances the technical content of the prior art is limited when compared with that of the application in issue. In the present case however, [...]  the situation is different since the subject-matter of the patent in suit does not contain any technical information concerning the claimed therapeutic treatment going beyond that in document [D3]. Accordingly, the difference between that document and the application in suit resides merely in the words used but not in their technical content so that no novel technical feature can be recognised in the present case."
• " As to decision T 0241/95 [], also cited by the appellant during the oral proceedings, the ]Board considers that, if anything, it tends to contradict the appellant's submission that document [D3] does not disclose an actual treatment. In T 0241/95 it was stated: "It is a well-established and accepted principle that, for the purpose of patent protection of a medical application of a substance, a pharmacological effect or any other effect such as a behavioural effect observed either in vitro or on animal models is accepted as sufficient evidence of a therapeutic application if for the skilled person this observed effect directly and unambiguously reflects such a therapeutic application." (paragraph 4.1.2)." 
• In view of the foregoing, the Board considers that the subject-matter of claim 1 does not fulfil the requirements of novelty of Article 54 EPC.
• As a comment, this decision seems to propose as a principle that the level of enablement required for Art.83 and an anticipating disclosure ought to be the same, also for first and second medical use claims.

EPO T 1031/00 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.