Zusammenfassung von EPC2000 Art 056 für die Entscheidung T0852/20 vom 27.11.2023

In T 852/20 the board addressed the issue of whether post-published experimental data could be used to demonstrate a technical effect that was not explicitly derivable from the application as filed. In the impugned decision, the opposition division had rejected the opposition filed against the patent, concluding that the subject-matter of the claims according to the main request involved an inventive step. In arriving at this conclusion, the opposition division had taken into account an effect evidenced by post-published data. The post-published experimental data in question comprised two tables filed by the patent proprietor (respondent) during the examination phase. These tables showed that Form 1 of vemurafenib exhibited increased water solubility and bioavailability in comparison with Form 2. The opposition division had relied on these data to formulate the objective technical problem as providing an improved form of vemurafenib with the aim of overcoming known solubility issues. The appellant (opponent) did not dispute that the experimental data demonstrated increased water solubility and bioavailability achieved by Form 1 of vemurafenib compared with Form 2; however, it contested that the post-published experimental data could be used as the sole basis to demonstrate this effect, since this effect was not derivable from the application as filed. The board considered order no. 2 of G 2/21, and determined that the question to be answered in the present case was thus whether the effect relied upon by the respondent and demonstrated in the post-published experimental data could be derived by the skilled person, having the common general knowledge in mind and based on the application as filed, as being encompassed by the technical teaching and embodied by the same originally disclosed invention. The board concluded that the purported technical effect of increased water solubility and bioavailability of Form 1 over Form 2 was not disclosed or taught anywhere in the application as filed. By no means could the skilled person derive from the application as filed that one particular crystalline form, namely the claimed Form 1, had good solubility and bioavailability, let alone solubility and bioavailability that was better than that of another crystalline form (Form 2). It followed that, based on the application as filed, and having the common general knowledge in mind, the skilled person would not have derived the purported technical effect, i.e. the increased water solubility and bioavailability of Form 1 of vemurafenib over Form 2, as being encompassed by the technical teaching of the application as filed, let alone that the skilled person would have derived it as being embodied by the same originally disclosed invention. Therefore, it could not be taken into account for formulating the objective technical problem in accordance with G 2/21. In the absence of a technical effect achieved by the distinguishing feature of claim 1, the objective technical problem was defined as providing an alternative crystalline form of vemurafenib, as formulated by the appellant. The board found that the subject-matter of claim 1 of the main request lacked an inventive step in view of the closest prior art (D1) in combination with the common general knowledge represented by D4. As a result, the board set aside the decision of the opposition division and revoked the patent.