Key points
- The Board finds that a claim (directed to a software invention) has distinguishing features that are technical, but that provide no technical effect.
- The Board concludes that the features are arbitrary modifications over the closest prior art, which therefore do not provide for an inventive step, but not without going into a detailed legal analysis of the work done by the word 'therefore', even referring to the 1986 article of Mr Szabo on inventive step.
- The Board: "2.6 Given that the alleged technical effect is not credibly achieved and the board cannot identify an effect either, it is not possible for the board to formulate an objective technical problem that is directly and causally related to the claimed invention, in particular to the alleged distinguishing features (b) to (h).
- Following the principles established in G 1/19 (cf. Reasons 49, 82 and 124; see also points 3.1 and 3.3 below), the problem-solution approach may be terminated at this stage if the distinguishing features do not credibly achieve any technical effect over the whole scope claimed.
- This emanates from settled case law according to which, if a technical effect is not obtained over the full breadth of a claim, at least a subset of the claimed subject-matter is not to be seen as a technical solution to a technical problem and hence cannot be acknowledged as an "invention" involving an inventive step within the meaning of Article 56 EPC (see e.g. T 939/92, Reasons 2.7; T 176/97, Reasons 4.4, last paragraph; T 1294/16, Reasons 26.2).
- T 939/92 was a chemistry case, but nowadays it is applied more broadly.
- Hence, the introduction of a distinguishing feature having no credible technical effect may then be considered to be no more than an arbitrary modification of the design of a known subject-matter which, being arbitrary, cannot involve an inventive step under Article 56 EPC (see e.g. T 939/92, Reasons 2.5.3 (link to that para); T 72/95, Reasons 5.4; T 746/22, Reasons 1.5).
- The rationale behind this is to avoid irrelevant and thus superfluous comparisons between claim features which, after all, may be selected by the skilled person in an arbitrary way, and the prior art.
- In other words, the comparison between a claim, whose subject-matter cannot credibly solve any technical problem, and the technical teaching of a prior-art document can only lead to an artificial and superfluous exercise, i.e. looking for incentives, hints or a motivation comprised or implied in that prior-art document for arriving at a solution which falls within the terms of such an ill-defined subject-matter. This exercise may be likened to a search for a black cat in a dark room that is actually not there.
- Similarly, searching for an alternative way to cause a technical effect that is not credibly achieved by the claimed subject-matter does not help either; as also looking for a grey cat in the same dark room does not appear to be useful (see also point 3.3.2 below). "
- I don't understand the Board's analogy, I'm afraid.
- "In such a case, the distinguishing features which have no effect are considered to be an arbitrary and/or non-functional modification of the prior art, which cannot support an inventive step (see T 72/95, Reasons 5.4; T 1294/16, Reasons 26.2; T 287/23, Reasons 2.8.2 and 2.8.3; T 1580/23, Reasons 2.2.8)."
- The discussion of the legal issue continues in point 3.3 of the decision, which I include after the jump. The Board even refers to the seminal article of Mr. Szabo on inventive step from 1986, "The Problem and Solution Approach to the Inventive Step".
EPO
The link to the decision can be found after the jump.
3.3 The respondent [proprietor] further raised specific doubts in view of the board "terminating" the problem-solution approach after the conclusion that there was no credible technical effect over the whole scope claimed (cf. point 2.6 above).
3.3.1 For cases where a technical effect is indeed not credibly achieved over the whole scope of a claim, the board considers that the established practice provides for two paths to overcome this specific objection: the patentee may amend the claim to a narrower scope where the alleged effect is now indeed credibly achieved, or the board may reformulate the objective technical problem to a less ambitious one based on a different effect that is credibly achieved. In some instances, there may be no credible technical effect whatsoever that can be attributed to the features distinguishing the claimed invention from the starting point selected for the inventive-step assessment. In such a case, the board considers these distinguishing features to be an arbitrary or non-functional modification of the prior art (cf. point 2.6 above).
Such an arbitrary or non-functional modification, however, cannot support an inventive step. It would be entirely counter-intuitive to acknowledge an inventive step for features associated with such a modification. Consequently, this particular way of applying the problem-solution approach does not represent a "failure" or an "incomplete application" of the problem-solution approach. On the contrary, it is its logical endpoint: the demonstration that the claimed differences provide no technical effect at all, i.e. no contribution over the prior art, constitutes the very proof of their "obviousness" under Article 56 EPC.
As a result, the respondent's argument that the proprietor should "win by default" if the problem-solution approach could not be completed in the traditional way represents a misunderstanding of how "obviousness" is to be assessed in relation to Article 56 EPC.
Rather, the board considers this "effect-centred" approach to be foundational to the EPC. It refers in this regard to a prominent article that can be considered to lie at the origin of the problem-solution approach as it has been devised by the Boards of Appeal and practised by the EPO, namely "The Problem and Solution Approach to the Inventive Step", G.S.A. Szabo, 1986, 10 EIPR, pages 293 to 303. This article, quoting T 22/82, indicates that a mere "structural difference in a compound has no intrinsic value or significance for the assessment of inventive step as long as it does not manifest itself in a valuable property in the widest sense, an effect or an increase in the potency of an effect" (see page 297, left-hand column). In particular, the article warns that without such an effect or increase, "very odd (and even useless) mixtures could become highly inventive on the basis of the mere unexpectedness of their 'structure'".
- Incidentally, see the discussion of the UK Court of Appeal's decision in Actavis v Novartis here, about the 5¼ inch plate paradox (https://ipkitten.blogspot.com/2010/02/problem-solution-approach-ur-doin-it.html)
The author's conclusion is that the only way to prevent this and to maintain a coherent patent system is to insist on a "consistently effect-centred approach". The same "effect-centred approach" was, linking back to Reasons 82 of G 1/19, solidified in T 939/92 (Reasons 2.5 to 2.5.4, referring to that same decision T 22/82), which held that "a mere arbitrary choice from this host of possible solutions of such a 'technical problem' cannot involve an inventive step" and that any patentable selection "must be justified by a hitherto unknown technical effect". In this regard, the board would like to also refer to the conclusions of the UPC Central Division Munich in case UPC_1/2023 of 16 July 2024 (see e.g. its sixth headnote: "A feature that is selected in an arbitrary way out of several possibilities cannot generally contribute to inventive step").
3.3.2 The board distinguishes this situation from cases where the objective technical problem is correctly formulated as "to provide an alternative solution to a known problem" (see e.g. T 1628/22 as cited by the respondent, Reasons 4.2.2 and 4.3.1, or T 2004/21, Reasons 3.12). That formulation is however only appropriate when the distinguishing features result in a functional alternative. To further illustrate this distinction: if a prior-art composition of A+B+D achieves an effect only through the functional interaction of D with A and B and a claimed composition of A+B+C achieves the same effect through the functional interaction of C with A and B, then C indeed provides a technical alternative by identifying an alternative way of achieving the same effect, i.e. solving a problem known in the prior art. In contrast, if the addition of C does not lead to an effect through its functional interaction with A and B and therefore C does not contribute to a technical effect beyond that already provided by A+B, then C is a non-functional modification for which the "provision of an alternative way" cannot constitute a suitable objective technical problem. In view of the foregoing, it appears to be quite logical and consistent that, in that regard, also the EPO Guidelines indicate that "the problem could be simply to seek an alternative to a known device or process which provides the same or similar effects or is more cost-effective" (see Part G, Chapter VII, 5.2, penultimate paragraph, in its latest version of April 2025; board's emphasis).
3.3.3 Overall, if there is no technical effect that is credibly derivable from the wording of a claim on the basis of its distinguishing features, it is usually unnecessary to - artificially - formulate an (unsolved) objective technical problem, such as finding an "alternative way to achieve a (non-existent) technical effect". In such cases, the distinguishing features simply constitute arbitrary or non-functional modifications of the available prior art which cannot involve an inventive step within the meaning of Article 56 EPC.
3.3.4 This is the situation in the present case, where features (b) to (h) have no technical effect and their addition does not achieve an effect through their functional interaction with feature (a) which goes beyond that of feature (a).
3.4 The board also rejects the respondent's formulations of the objective technical problem, such as starting from what the prior art is "silent about" (cf. the section "Starting from D1" on page 9 of the respondent's reply to the board's communication under Article 15(1) RPBA) or defining, with reference to T 1344/21 (cf. Reasons 7.4.2), the problem as "how to implement an embodiment of the prior art" (see e.g. also T 1737/21, Reasons 3.3.3). These formulations are flawed since they cannot be derived from effects directly and causally related to the technical features of the claimed invention (cf. G 2/21, Reasons 25).
3.5 Moreover, the respondent's arguments concerning a "presumption of validity" and the "burden of proof" are unconvincing. As already clarified in G 2/21 (see Reasons 26) and, in particular, in T 449/23 (see Reasons 2.5.6(d)), while, in opposition proceedings, the opponent bears the initial burden of presenting a prima-facie case for lack of inventive step, the burden of demonstrating any alleged technical effect used to counter that case lies with the proprietor (see also T 1188/00, Reasons 4.9).
The respondent attempted to discharge this burden by filing new evidence, including declarations E1 and E2. However, this evidence fails to support the alleged effect for the main request. Both the inventor's declaration (E1) and the expert's declaration (E2) in fact describe a specific, technically sensible implementation of the present invention, notably, at least for E1, in the context of the industry standard "NoahLink". The potential patentability of a specific, narrow embodiment, however, cannot render a claim allowable which, due to its breadth, encompasses a multitude of other, non-inventive embodiments. The submitted evidence is therefore not decisive for the main request.
3.3.2 The board distinguishes this situation from cases where the objective technical problem is correctly formulated as "to provide an alternative solution to a known problem" (see e.g. T 1628/22 as cited by the respondent, Reasons 4.2.2 and 4.3.1, or T 2004/21, Reasons 3.12). That formulation is however only appropriate when the distinguishing features result in a functional alternative. To further illustrate this distinction: if a prior-art composition of A+B+D achieves an effect only through the functional interaction of D with A and B and a claimed composition of A+B+C achieves the same effect through the functional interaction of C with A and B, then C indeed provides a technical alternative by identifying an alternative way of achieving the same effect, i.e. solving a problem known in the prior art. In contrast, if the addition of C does not lead to an effect through its functional interaction with A and B and therefore C does not contribute to a technical effect beyond that already provided by A+B, then C is a non-functional modification for which the "provision of an alternative way" cannot constitute a suitable objective technical problem. In view of the foregoing, it appears to be quite logical and consistent that, in that regard, also the EPO Guidelines indicate that "the problem could be simply to seek an alternative to a known device or process which provides the same or similar effects or is more cost-effective" (see Part G, Chapter VII, 5.2, penultimate paragraph, in its latest version of April 2025; board's emphasis).
3.3.3 Overall, if there is no technical effect that is credibly derivable from the wording of a claim on the basis of its distinguishing features, it is usually unnecessary to - artificially - formulate an (unsolved) objective technical problem, such as finding an "alternative way to achieve a (non-existent) technical effect". In such cases, the distinguishing features simply constitute arbitrary or non-functional modifications of the available prior art which cannot involve an inventive step within the meaning of Article 56 EPC.
3.3.4 This is the situation in the present case, where features (b) to (h) have no technical effect and their addition does not achieve an effect through their functional interaction with feature (a) which goes beyond that of feature (a).
3.4 The board also rejects the respondent's formulations of the objective technical problem, such as starting from what the prior art is "silent about" (cf. the section "Starting from D1" on page 9 of the respondent's reply to the board's communication under Article 15(1) RPBA) or defining, with reference to T 1344/21 (cf. Reasons 7.4.2), the problem as "how to implement an embodiment of the prior art" (see e.g. also T 1737/21, Reasons 3.3.3). These formulations are flawed since they cannot be derived from effects directly and causally related to the technical features of the claimed invention (cf. G 2/21, Reasons 25).
3.5 Moreover, the respondent's arguments concerning a "presumption of validity" and the "burden of proof" are unconvincing. As already clarified in G 2/21 (see Reasons 26) and, in particular, in T 449/23 (see Reasons 2.5.6(d)), while, in opposition proceedings, the opponent bears the initial burden of presenting a prima-facie case for lack of inventive step, the burden of demonstrating any alleged technical effect used to counter that case lies with the proprietor (see also T 1188/00, Reasons 4.9).
The respondent attempted to discharge this burden by filing new evidence, including declarations E1 and E2. However, this evidence fails to support the alleged effect for the main request. Both the inventor's declaration (E1) and the expert's declaration (E2) in fact describe a specific, technically sensible implementation of the present invention, notably, at least for E1, in the context of the industry standard "NoahLink". The potential patentability of a specific, narrow embodiment, however, cannot render a claim allowable which, due to its breadth, encompasses a multitude of other, non-inventive embodiments. The submitted evidence is therefore not decisive for the main request.
- Note, G 1/03 point 2.5.1: "if a claim comprises non-working embodiments, this may have different consequences, depending on the circumstances. Either there is a large number of conceivable alternatives and the specification contains sufficient information on the relevant criteria for finding appropriate alternatives over the claimed range with reasonable effort. If this is the case, the inclusion of non-working embodiments is of no harm (T 238/88, OJ EPO 1992, 709; T 292/85, OJ EPO 1989, 275; T 301/87, OJ EPO 1990, 335). Therefore, a disclaimer is neither necessary nor appropriate. If this is not the case and there is lack of reproducibility of the claimed invention, this may become relevant under the requirements of inventive step or sufficiency of disclosure. If an effect is expressed in a claim, there is lack of sufficient disclosure. Otherwise, ie if the effect is not expressed in a claim but is part of the problem to be solved, there is a problem of inventive step (T 939/92, OJ EPO 1996, 309)."
2.8 In the present case, for the above observations, the board concludes that features (b) to (h) represent such arbitrary and non-functional modifications.
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