Key points
- The Board, in translation: " It is correct that these effects - improvement in lubrication performance and leak detection - are not explicitly mentioned in the patent in question.
- " However, it is not required that an effect be explicitly mentioned in the patent or patent application in order for it to be taken into account in the assessment of inventive step. Indeed, the condition set out in the decision of the Enlarged Board of Appeal G 2/21 requires only that the skilled person, on the basis of the application as filed, would consider the said effect to be included in the technical teaching of the patent application. "
- Mentioning the technical effect is, hence, neither a necessary nor a sufficient condition. It really depends on the technical field.
- "In the present case, the board is of the opinion that the skilled person, when searching for compositions for use in refrigeration systems, inevitably takes into account lubrication and leak detection effects, in particular because these effects are indispensable for the effective use of the compositions as a refrigerant. The problems of achieving these effects are therefore subsumed within the more general problem of making refrigerant compositions available.
- Therefore, the Chamber takes into account the test results described in document D27."
- " Document D27 therefore reveals that the presence of HCC-40 in composition A increases the usefulness of the composition as a refrigerant compared to a composition B which does not contain HCC-40. The technical effect produced by the distinguishing feature therefore consists at least in that a preparation containing a small amount of HCC-40 is characterized by improved leak detection."
- The Board, in the present case, does not discuss if the application makes it prima facie credible that the technical effects are achieved by the claimed invention.
Definitely on the more liberal side + some similarity to the general case mentioned in the Guidelines, G-VII, 11:
ReplyDeleteIt is then permissible to reformulate the technical problem by including the aspect of toxicity, since pharmaceutical activity and toxicity are related in the sense that the skilled person would always contemplate them together.