T 1447/18 - Burden of proof technical effect

Key points

• In this opposition appeal, the Board has to decide on the inventive step of a set of claims. The  Board arrives at the question of whether a technical effect is to be acknowledged for the distinguishing feature is to be acknowledged.
• The Board: "It follows that the examples of the patent in suit do not show that the compositions according to operative claim 1 have improved properties over the known composition of example 5 of D2.
•  In that regard, the patent proprietor considered that the patent in suit showed that an effect had been achieved and that the onus was on the opponents to show that that effect had not been obtained. The Board observes that each of the parties to the proceedings carries the burden of proof for the facts it alleges (Case Law of the Boards of Appeal, 9th Edition, July 2019, III.G.5.1 and III.G.5.2). 
• In the present case, the onus of proof to demonstrate the presence of an effect was on the patent proprietor who alleged that effect for the compositions according to claim 1 of auxiliary request 3.
• In the absence of evidence of that effect from the patent proprietor, the unproven effect cannot be taken into account for the formulation of the problem solved over the closest prior art."
• As a comment, CLBA III.G.5.1.1 also states: "A technical problem set out in a patent is considered to be credibly solved by a claimed invention if there are no reasons to assume the contrary. Under such circumstances, the burden is normally on the opponent to prove the opposite or at least provide evidence casting doubt on the alleged solution of the problem. If the opponent succeeds, the burden of proof shifts to the patent proprietor who must then prove its assertions (see e.g. T 1797/09)".
• It may be added that generally, the opponent has the duty to attack the claims in the notice of opposition, and if the attack is an inventive step attack, to assert all factual elements necessary for such an attack (and proof the asserted facts as appropriate). 

EPO T 1447/18 -

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

https://www.epo.org/law-practice/case-law-appeals/recent/t181447eu1.html

5.4 It follows that the examples of the patent in suit do not show that the compositions according to operative claim 1 have improved properties over the known composition of example 5 of D2. In that regard, the patent proprietor considered that the patent in suit showed that an effect had been achieved and that the onus was on the opponents to show that that effect had not been obtained. The Board observes that each of the parties to the proceedings carries the burden of proof for the facts it alleges (Case Law of the Boards of Appeal, 9th Edition, July 2019, III.G.5.1 and III.G.5.2). In the present case, the onus of proof to demonstrate the presence of an effect was on the patent proprietor who alleged that effect for the compositions according to claim 1 of auxiliary request 3. In the absence of evidence of that effect from the patent proprietor, the unproven effect cannot be taken into account for the formulation of the problem solved over the closest prior art.