Zusammenfassung von Article 056 EPC für die Entscheidung T1602/21 vom 25.07.2024

In T 1602/21 the opposition division had decided that the provision of a method according to claim 1 of the patent as maintained involved an inventive step. One of the differing features to closest prior art D1 was seen in the nature of adsorbent, i.e. an OH-type basic ion-exchange resin (alternative "a" in the impugned decision) or an adsorbent selected from zeolite, silica-alumina, and alumina (alternative "b" in the impugned decision), or mixtures thereof. In the case of alternative "a", a surprising technical effect based on the disclosure of documents D30 and D32 was acknowledged – D32 being experimental data provided by the respondent during the opposition proceedings. The appellant argued, by reference to G 2/21, that D32 should not be considered for the purposes of inventive step, since it was published after the filing date of the contested patent, and since the technical effect allegedly shown therein was not mentioned in the patent. The technical effect could thus not be relied upon, and the technical problem could only be seen in the provision of an alternative, which had been solved in an obvious manner. The board was not convinced by the appellant’s above argument. The application as filed disclosed that the use of an OH-type strongly basic ion-exchange resin led to improved removal of sugar or sugar alcohol. Document D32 disclosed experimental data showing a link between the use of an OH-type strongly basic ion-exchange resin and the effect of improved removal of sugar or sugar alcohol. The board thus concluded that the effect was derivable from the application as filed, and as such the respondent could rely upon it for inventive step, even if D32 had been filed after the filing date of the contested patent (see G 2/21, headnote II). The board further observed that the condition stated by G 2/21 that "the skilled person ... based on the application as originally filed, would derive said effect as being encompassed by the technical teaching" (board's emphasis) was not equivalent to the "gold standard" disclosure required normally for Art. 123(2) EPC. It was sufficient that the skilled person was satisfied that the advantageous technical effect was indeed achieved by the claimed solution, on the basis of the teaching of the application, and once the technical effect had been brought to its attention, possibly from another source as the application. It was not required that the technical effect relied on was also disclosed so explicitly and clearly that the skilled person would recognise it only on the basis of the application and without knowing the later evidence.