T 0228/23 - The admissibility of a technical effect

Key points

• In G 2/21, Question 1, as posed by the TBA, was formulated in terms of the admissibility of post-published evidence for the technical effect ("must be disregarded").
• The answer given by the EBA in the second headnote concerned the technical effect in terms of substantive patent law (see points 57-58 of the reasons), and in terms of "the technical teaching" of the application as filed.
• Thereby G 2/21 did not pre-empt the procedural admissibility of technical effects, in the sense that a technical effect is a factual assertion (of the proprietor) that can be late-filed and inadmissible, as the present decision shows. 
• In other words, the requirement of G 2/21, hn.2, and the exercise of discretion under Art.114(2) EPC are independent of each other. 
• " In section B.6 of its submission of 30 July 2024 [shortly before the oral proceedings], the appellant - patent proprietor referred to an improvement in terms of friability when preparing the tablets by dry granulation compared to direct compression. The appellant - patent proprietor argued during oral proceedings that the improvement of friability was encompassed by the teaching of the patent, since the patent explicitly refers to the hardness of the tablets and friability is a known critical parameter of tablets."
• Note, the second sentence is about G 2/21, headnote 2.
• "This argument [...] constitutes an amendment to the case of the appellant - patent proprietor (Article 12(4) RPBA, 1st sentence). Since this amendment was filed after notification of the communication under Article 15(1) RPBA, its admittance is to be decided on the basis of Article 13(2) RPBA."

• "In the present case, the appellant - patent proprietor has not indicated any such exceptional circumstances."

• " As a consequence, the Board does not admit the submission of the appellant - patent proprietor of 30 July 2024 in section B.6 concerning friability into the appeal proceedings (Article 13(2) RPBA)."

EPO 

The link to the decision and an extract of it can be found after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t230228eu1

2.2 Submission of the appellant - patent proprietor of 30 July 2024 in section B.6 concerning friability

2.2.1 In section B.6 of its submission of 30 July 2024, the appellant - patent proprietor referred to an improvement in terms of friability when preparing the tablets by dry granulation compared to direct compression. The appellant - patent proprietor argued during oral proceedings that the improvement of friability was encompassed by the teaching of the patent, since the patent explicitly refers to the hardness of the tablets and friability is a known critical parameter of tablets.

2.2.2 This argument is however not convincing.

2.2.3 The appellant - patent proprietor relied for the first time in the entire proceedings on an alleged improvement of friability (even if based on data contained in the documents on file) as a technical effect in the context of inventive step. In particular as argued by appellants - opponents 2 and 4 during oral proceedings friability and hardness are two different properties evaluated by different methods (see D33, paragraphs 17.5.3 and 17.5.4). Moreover, none of these two properties was relied upon by the appellant - patent proprietor as a technical effect for the issue of inventive step in the present proceedings before. This argument therefore constitutes an amendment to the case of the appellant - patent proprietor (Article 12(4) RPBA, 1**(st) sentence). Since this amendment was filed after notification of the communication under Article 15(1) RPBA, its admittance is to be decided on the basis of Article 13(2) RPBA.

2.2.4 According to Article 13(2) RPBA, such a late-filed amendment shall in principle not be taken into account unless there are exceptional circumstances, which have been justified by cogent reasons by the party concerned. In the present case, the appellant - patent proprietor has not indicated any such exceptional circumstances.

2.2.5 As a consequence, the Board does not admit the submission of the appellant - patent proprietor of 30 July 2024 in section B.6 concerning friability into the appeal proceedings (Article 13(2) RPBA).