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.
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