R 0009/14 - Summary of problem-solution approach

EPO R 9/14 
For the decision, click here. (For the appeal decision under review T 2044/09, see here)

Key points

• The Enlarged Board (three-member panel) gives a useful and concise summary of the problem-solution approach in this petition-for-review case (with minor edits in italics):
  
  It is established board of appeal case law that inventive step is to be examined using the problem-solution approach. That means first determining the closest prior art. Then the technical problem vis-à-vis the closest prior art that has been effectively solved is determined. If it is established that the claimed subject-matter has a technical effect or improvement compared with the closest prior art - which is usually shown by means of comparative tests - the problem solved [i.e., the objective technical problem] may be formulated in terms of [how to modify the closest prior art to obtain] the effect/improvement. If no effect is identifiable, the problem solved may be formulated in terms of [providing] an alternative to the closest prior art. Finally, it is examined whether the technical features claimed, which achieve the results, i.e. solve the technical problem, are an obvious solution given the information contained in the prior art.

Further main points

• Regarding the alleged procedural violation, the OD had maintained the patent as granted. The opponent-appellant did not attend oral proceedings, the Board had issued no preliminary opinion and only said "please present your case" and asked about comparative tests. The patent was revoked for lack of inventive step. I can imagine the patentee was disappointed. Nevertheless, the EBA approves of this course of events (edit 10.10.2019)
• The EBA also states that "the petitioner was unable to submit comparative tests vis-à-vis the closest prior art when asked by the chairman. And as patent proprietor, the petitioner – not the Board, as it seems to think – bore the burden of proof." In my opinion, the opponent-appellant  initially has the burden of proof to show lack of technical effect or at least cast reasonable doubt on the alleged effect T1797/09), even if he is absent during oral proceedings. The issue may have been how to Board should have proceeded after deciding to shift the burden of proof to the patentee: some time for the patentee to carry out the experiments would be reasonable. Otherwise, the whole purpose of shifting the burden of proof is void if the patent proprietor must carry out the experiment in order to anticipate for any decision of the Board to shift the burden to him. 

Summary of Facts and Submissions

I. The respondent (patent proprietor) in case T 2044/09 has filed a petition for review under Article 112a EPC against the decision of the Technical Board of Appeal 3.3.02 dated 11 February 2014 setting aside the contested opposition division's decision and revoking European patent [..] for lack of inventive step (Article 56 EPC). [...]

V. The petitioner's submissions can be summarised as follows:

1. The opposition division maintained the patent as granted. The opponent filed an appeal. The Board scheduled oral proceedings without issuing a preliminary opinion. They were held in the absence of the opponent-appellant, who had previously put forward numerous facts and arguments. The chairman opened the oral proceedings with a discussion as to whether the patent complied with Article 56 EPC. He began this discussion by giving the floor to the patentee with just the few words: "Please present your case."

2. However, with 43 documents on file, no opposing party present to elucidate its many written arguments and no indication from the Board as to the grounds or evidence it considered relevant, it was not clear to the petitioner "which arguments to present counter-arguments against". That was in breach of the chairman's obligation under Article 15(4) RPBA to conduct the proceedings fairly and efficiently. [...]

Reasons for the Decision

[...] 2. Merits

2.1 [...] The petitioner submits that the chairman should have given it more specific procedural guidance about the aspects it needed to focus on. The Enlarged Board would comment on that as follows.

2.1.1 It is established board of appeal case law that inventive step is to be examined using the problem-solution approach. That means first determining the closest prior art. Then the technical problem vis-à-vis the closest prior art that has been effectively solved is determined. If it is established that the claimed subject-matter has a technical effect or improvement compared with the closest prior art - which is usually shown by means of comparative tests - the problem solved may be formulated in terms of the effect/improvement. If no effect is identifiable, the problem solved may be formulated in terms of an alternative to the closest prior art. Finally, it is examined whether the technical features claimed, which achieve the results, i.e. solve the technical problem, are an obvious solution given the information contained in the prior art. 

[..]

2.4.1 The petitioner argues that the Board did not address its submissions about the invention's obviousness having regard to the combination of D1 and D4, and instead asked whether comparative experiments were available. The Enlarged Board regards this argument as a clear misunderstanding of the problem-solution approach. The first step of that approach is to identify the closest prior art and then the problem solved by the invention vis-à-vis that art, in the present case D1. This is normally done by presenting results of comparative tests showing that the invention has a technical effect or improvement. Only then will the Board consider obviousness, e.g. in the present case by combining documents D1 and D4. If no technical effect can be shown, the question is whether an inventive alternative to the closest prior art has been produced or the alternative is obvious.

So in the present case the combination of D1 and D4 was not to be discussed until the problem to be solved had been identified. There was no reason to take any other course of action. The petitioner's written and oral submissions have not shown why the Board should have departed from the standard sequence when applying the problem-solution approach.

2.4.2. However, in fact the Board did give the petitioner the possibility to comment on the claimed subject-matter's obviousness in terms of D1 and D4. The petitioner does not dispute that. It clearly saw the matter differently from the Board, but that is a matter of substance and therefore not an issue for the Enlarged Board to decide in the present proceedings.

2.4.3 The same goes for the petitioner's objection that the comparative data's importance in the contested decision took it by surprise. That issue too was addressed in the oral proceedings. But the petitioner was unable to submit comparative tests vis-à-vis the closest prior art when asked by the chairman. And as patent proprietor, the petitioner – not the Board, as it seems to think [,] – bore the burden of proof. Although the petitioner appears to be believe otherwise, the submission of comparative-test results to prove an effect or improvement is part of the problem-solution approach when establishing the problem over the closest prior art that is effectively solved by the claimed subject-matter. The petitioner's specialist knowledge of patent law should have told it that. There can thus be no question of a "surprise" together with infringement of the right to be heard. The petitioner was obliged to admit in the oral proceedings that no comparative tests vis-à-vis the closest prior art existed. Its argument that the documents on file otherwise contained evidence for an effect failed to convince the Board. Whether the Board was right to take that line is a matter of substantive law and as such not within the Enlarged Board's powers of review.

2.5 Consequently, in so far as the petition alleges a breach of the right to be heard, it is to be rejected as clearly unallowable.

ORDER

For these reasons it is decided that:

The petition for review is unanimously rejected as being clearly unallowable.