T 0591/23 - Sufficiency and the problem addressed by the patent

Key points

• " The appellant [opponent] referred to T 2284/15 [blog post], according to which an invention was only workable and sufficiently disclosed if it could be carried out such that it solved the technical problem posed in the patent (Reasons 19 to 26; confirmed in T 2729/18, Reasons 14.1).
• "The reasoning in T 2284/15 is based on the assertion that solving a technical problem is a fundamental characteristic of an "invention" and that Rule 42(1)(c) EPC therefore required that the description disclose the invention, as claimed, in such terms that the technical problem and its solution can be understood.
• "The current Board doubts that this reasoning is in line with the established case law referred to under point 1.10.5 above and the understanding confirmed in G 1/19, Reasons 24 and 25, that an "invention" is defined by its technical character, whereas "non-inventions" lack such technical character. 
• "The question of whether the claimed subject-matter solves a technical problem is, on the other hand, part of the assessment whether an invention involves an inventive step. This requirement in Articles 52(1) and 56 EPC is not formulated as an inherent characteristic of an "invention" but as a separate requirement which must be met for an invention to be patentable. 
• "Furthermore, when inventive step is assessed, the objective technical problem is assessed (see G 1/19, Reasons 26, (iv)), which may be different from the subjective technical problem set out in the patent. Additionally, as explained in T 1473/19, Reasons 3.11.4, the "invention" referred to in Articles 54, 56 and 83 EPC (see T 92/21, Reasons 3.2, last sentence) and, with regard to claim amendments, the subject-matter under Article 123(2) EPC (see G 2/10, Reasons 4.5.2, last paragraph) refer to the claimed subject-matter only. "
• Note, Art. 53 is not included in the list, see also T 944/15. Note also that under Art. 56, the advantages demonstrated in the patent are relevant (G2/21). 
• "For these reasons, a technical problem which is - as in the case at hand - only set out in the patent specification is, as such, not part of the invention which must be sufficiently disclosed pursuant to Articles 83 and 100(b) EPC. 
• "It must also be stressed that Rule 42 EPC only governs the content of the description in a patent application. Hence, the requirement under Rule 42(1)(c) EPC that the description disclose the claimed invention in such terms that the technical problem and its solution can be understood cannot simply be subsumed under the requirement of sufficiency of disclosure under Articles 83 and 100(b) EPC."

EPO 

The link to the decision can be found after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t230591eu1