In recent Technical Board of Appeal (TBA) case T0258/21 the TBA reiterated settled case law that data is required in the application as filed to support a second medical use claim. Post filed evidence was submitted, purportedly to support the technical effect of the Application. The TBA found that the post filed data should not be considered as in G 2/21, the Enlarged Board of Appeal (EBA) Board of Appeal found 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“.
Even if the post-filed data had been considered, the TBA found that the technical effect would not adequately have been supported for this application.
This is a useful demonstration of how the EBA findings in G 2/21 will be applied.