T 2001/12 - Essential features: Art. 83 or 84 or 56?

T 2001/12 

published 03.02.2015 - [B] - for the decision, clicke here

EPO Headnote
An objection of insufficient disclosure under Article 83 EPC 1973 cannot legitimately be based on an argument that the application would not enable a skilled person to achieve a non-claimed technical effect (point 3.4).

A doubt that the invention as claimed is capable of solving the problem defined in the application may have the following consequences:

a) If the question arises because the claim fails to specify those features which are disclosed in the application as providing the solution to the problem, then the description and claims are inconsistent in relation to the definition of the invention, and an objection under Article 84 EPC 1973 may properly arise that the claims do not contain all the essential features necessary to specify the invention.

b) If this is not the case, but, having regard to the prior art, and irrespective of what may be asserted in the description, it does not appear credible that the invention as claimed would actually be capable of solving the problem, then an objection under Article 56 EPC 1973 may be raised (point 4.4)

Key points

• This decision seems very useful for daily practice, for those cases the Examiner or a third party does not believe that the invention as claimed "works" - hence does not provide the "promised effect" (or considers the claims to be "too broad" ). If that effect is specified in the claim, it is a matter o A83. If the description describes features as essential which are not included in the claim, it is a matter of A84. Otherwise, it is a matter under A56.
• In case it is a matter of A56, and if the applicant can not demonstrate the effect credibly, the objective technical problem has to be forumlated differently. This does not need to be fatal, because the claimed subject matter can still involve an inventive step as non-obvious alternative, or solution to the less-ambitious problem.