4.1.2 Technical effect encompassed by the technical teaching of the application documents and actually provided/achieved
Overview
4.1.2 Technical effect encompassed by the technical teaching of the application documents and actually provided/achieved
In G 2/21 (OJ 2023, A85), the Enlarged Board dealt with the question to what extent a technical effect relied upon by the applicant/proprietor needed to be reflected in the application as originally filed and whether post-published evidence could be taken into account to establish that the problem formulated based on this effect was credibly solved.
The Enlarged Board determined that the relevant standard for the reliance on a purported technical effect when assessing whether or not the claimed subject-matter involved an inventive step concerned the question of what 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. The technical effect relied upon, even at a later stage, needed to be encompassed by that technical teaching and to embody the same invention (point 93 of the Reasons and Headnote II).
The Enlarged Board affirmed that the technical problem must be derived from effects directly and causally related to the technical features of the claimed invention. An effect cannot be validly used in the formulation of the technical problem if the effect requires additional information not at the disposal of the skilled person even after taking into account the content of the application in question (G 2/21, OJ 2023, A85, points 25 of the Reasons; see also e.g. T 1045/21).
At the same time the EBA confirmed that 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 (G 2/21, OJ 2023, A85, Headnote I).
Post-published evidence is considered further in chapter I.D.4.3.3.
- T 1272/22
In T 1272/22 the appellant (opponent) and respondents (patent proprietors) disputed whether there was a synergistic effect between the distinguishing features, even if it were considered they served the same purpose. The board, applying Headnote II of G 2/21, could not see that the skilled person would have derived the synergistic technical effect referred to by the respondents when considering the application as originally filed. There was no explicit mention of any relationship between the two features and the position of the critical section for the efficiency of the connection, which the respondents had also relied on in its arguments in support of there being synergy, was not defined in the contested patent. The alleged synergy did not appear to the board to be derivable by the skilled person from the application as originally filed and it therefore held the partial problem approach was thus justified in the case in hand.