Enlarged Board lets later evidence prove a technical effect the application as filed already embodied

2023-03-23EPO

Decision of the Enlarged Board of Appeal G 2/21 (23 March 2023), Insecticide compositions / Sumitomo Chemical, on referral by Technical Board of Appeal 3.3.02 in interlocutory decision T 116/18 (11 October 2021), European patent application No. 12002626.5, opponent Syngenta Limited

The Enlarged Board of Appeal answered a referral from Technical Board of Appeal 3.3.02 in T 116/18, an opposition by Syngenta Limited against Sumitomo Chemical Company, Limited's patent on insecticide compositions, in which post-published test data were offered to prove the synergistic effect on which inventive step depended. The Enlarged Board held first that "evidence submitted by a patent applicant or proprietor to prove a technical effect relied upon for acknowledgement of inventive step of the claimed subject-matter may not be disregarded solely on the ground that such evidence, on which the effect rests, had not been public before the filing date of the patent in suit and was filed after that date." It held second that "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." The Board stated that the term plausibility "does not amount to a distinctive legal concept or a specific patent law requirement under the EPC" but is a criterion for reliance on a purported effect, and it noted that post-published evidence has a much narrower role under Article 83 sufficiency of disclosure than under Article 56 inventive step.

What it changesFor a machine learning application at the European Patent Office, the technical effect that carries inventive step, whether higher accuracy, lower latency, less memory or fewer training samples, must be something the skilled reader derives from the application as filed as the teaching of the invention. Benchmark results produced after filing can prove that effect; they cannot supply it. The drafting consequence is that the priority application has to state the effect, tie it to the claimed mechanism and preferably show at least one comparison, because an effect first asserted in prosecution against the closest prior art will be tested against what the original text embodied rather than against what the later data shows. Teams that file first and benchmark later should file the effect as a stated expectation with the reason it is expected. The decision leaves sufficiency alone: where the effect is a feature of the claim, the application itself must make it credible, and later data only backs that up.

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Burbage Law is the practice of Jon Burbage, a registered patent attorney. 342 United States patents have issued from applications he wrote; the full list is on the Patents page. More about Jon Burbage.

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