ARTICLE
16 November 2023

The EPO Board Of Appeal On The Evidence Required For A Technical Effect Relied On For Inventive Step

OO
Orsingher Ortu – Avvocati Associati

Contributor

Orsingher Ortu – Avvocati Associati
On 13 July 2023, the Board of Appeal of the EPO issued its Decision T 2465/19 on a case related to the experimental evidence required for a purported technical effect relied on for inventive step.
Italy Intellectual Property
To print this article, all you need is to be registered or login on Mondaq.com.

On 13 July 2023, the Board of Appeal of the EPO ("BA") issued its Decision T 2465/19 on a case related to the experimental evidence required for a purported technical effect relied on for inventive step. The case concerns a patent related to a semiconductor device. In the decision under appeal, the Examining Division highlighted that the patent was silent with respect to the technical effect of the claimed subject matter over the prior art, that the prior art and the patent at issue solved the same technical problem and that the claimed feature which differs from the closest prior art had no advantage or surprising effect and rather represented an arbitrary modification. Applying the teachings set forth by the Enlarged Board of Appeal in the recent decision G 2/21, the BA agreed with the applicant that there is no need to explicitly state the technical effect of an invention over the prior art in the patent application, as long as it is derivable from the original application, since the closest prior art may not have been known by the applicant at the time when the patent application was drafted. Moreover, the EB held that the claimed feature under examination was not an arbitrary selection but rather represented an alternative solution to a problem, not obvious for the skilled person.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

ARTICLE
16 November 2023

The EPO Board Of Appeal On The Evidence Required For A Technical Effect Relied On For Inventive Step

Italy Intellectual Property

Contributor

Orsingher Ortu – Avvocati Associati
See More Popular Content From

Mondaq uses cookies on this website. By using our website you agree to our use of cookies as set out in our Privacy Policy.

Learn More