Zusammenfassung von EPC2000 Art 056 für die Entscheidung T0703/18 vom 23.02.2023

In T 703/18 the patent related to an infant formula containing combinations of lutein and docosahexaenoic acid. For the respondent the correct technical problem was the one identified in the decision under appeal. In its view, the patent involved one of the rare cases of a "problem invention". It had not been recognised in the art that bioavailability of lutein from formula milk was lower than that achieved by human milk. Once this was known, the solution would have been obvious. The board noted that one reason why "problem inventions" were rare might be that they were somewhat at odds with the problem-solution approach. It was generally accepted that the formulation of the technical problem should not contain pointers to the solution or partially anticipate the solution. In contrast to this, "problem inventions" tended to do both. The board referred to the findings in T 2/83 on "problem inventions", in which the board held that "The discovery of a yet unrecognised problem may, in certain circumstances, give rise to patentable subject-matter in spite of the fact that the claimed solution is retrospectively trivial and in itself obvious ('problem inventions')". The board in the case in hand found that although this passage of T 2/83 referred to a device, it was not apparent why the reasoning in it would not apply also to claims directed to compositions. The decision T 2/83 conceded that the discovery of an unrecognised problem might in certain circumstances give rise to patentable subject-matter. This might be so even though once the formulation of the problem was accepted, the question of whether the solution was obvious became irrelevant. The board in the case in hand noted that a situation might arise in which, if a subject-matter claimed was assessed as a "problem invention", an attack based on lack of inventive step could be successfully directed only against the recognition of the problem, not against the claimed solution. At the same time, T 2/83 made it clear that in the context of a clearly desired improvement, side effects which might be interpreted as a solution of a yet unknown problem should not be decisive for patentability. In the case in hand, the board noted that while the issue with bioavailability of lutein was new information, bioavailability of trace elements and lipids from infant milk had been well investigated. Second, the "gold standard" for preparing an infant formula was and remained human milk. Therefore, when formulating the problem to be solved, one had to draw closely on the teaching available in the art on human milk. D16 itself disclosed that the individual concentration of lutein and zeaxanthin in human milk was distributed over a wide range. Third, the patent in suit related to preparing an infant formula, with preterm infants explicitly mentioned throughout the patent. Considering the above, the board found it was not justified to accept the formulation of a "problem invention". Instead, the technical problem had to be regarded as that of providing a nutritional formula (with lutein) suitable for infants, including newborns. As to obviousness, the board held the skilled person tasked with solving the problem would turn to D18, which showed that the concentration of lutein found in human milk, and especially in milk of mothers of newborn infants, was considerably higher than that disclosed by example 1 of D16. In view of this, the board stated the solution that the skilled person would have provided would be to increase the concentration of lutein, a straightforward exercise. D16 suggested the addition of a commercially available ingredient. The board had no reason to doubt that the skilled person would have considered a concentration within the range suggested in claim 2 of D16. The board found therefore that claim 1 as granted lacked inventive step. It decided that the decision under appeal was to be set aside and the patent revoked.