4. The technical problem

Catchword: 

Purported technical effect not derivable from the application as filed in the sense of G 2/21 (points 3.5 to 3.5.3 of the Reasons)

Catchword:

The undesired phenomena observed in the patent with the use of the prior art compositions would not inevitably manifest themselves upon the practical implementation of the teaching of the prior art. The recognition of the relevance of these phenomena should therefore be considered to form part of the technical contribution described in the patent. A specific reference in the formulation of the objective technical problem to the avoidance of these phenomena risks to unfairly direct development towards the claimed solution, which is not permissible in line with the principles as developed in the established jurisprudence (see reasons section 4.2.3).

Orientierungssatz:

Berücksichtigung einer in nachveröffentlichten Dokumenten gezeigten technischen Wirkung im Lichte der Entscheidung G 2/21 (Punkt 3.3 der Entscheidungsgründe).

Catchword:

Since the problem and solution approach defines the problem based on the effect of the differences from the closest prior art, and the effect is derived primarily from the disclosure of the invention, the effect documented in the present documents alone is taken as the basis for the problem formulation. The Board concluded that any further, undocumented effects would be speculative and should not be additionally included in the problem formulation (reasons 5.3.2)

Catchword: 

- Binding effect of a referring decision (see Reasons, points 9 to 9.4.5) - Interpretation of order no. 2 of G 2/21 (see Reasons, points 10 to 11.14, in particular points 11.10 and 11.14) - Submissions based on earlier decisions of the boards of appeal - admittance into the appeal proceedings (see Reasons, points 32 to 32.4, in particular point 32.3)

Headnote: 

I. 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.  II. 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.