G 2/21 - The Enlarged Board on the basics of inventive step

Key points

• "In accordance with Article 52(1) EPC, patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application." (r.22)
• This is immediately followed by: "According to the established jurisprudence of the boards of appeal, the assessment of inventive step is to be made at the effective date of the patent on the basis of the information in the patent together with the common general knowledge then available to the skilled person (see T 609/02, T 1329/04, T 1545/08; ...)"
• As a comment, the assessment of inventive step is normally made on the basis of the prior art, I would say.
• This raises the question of what the Enlarged Board precisely means with the above sentence.
• The Board cites T 609/02 first. The headnote of this decision is as follows: "If the description of a patent specification provides no more than a vague indication of a possible medical use for a chemical compound yet to be identified, later more detailed evidence cannot be used to remedy the fundamental insufficiency of disclosure of such subject-matter." Hence, this decision is about Art. 83. 
• The Board also cites T 1329/04. The headnote of this decision states:  "The definition of an invention as being a contribution to the art, i.e. as solving a technical problem and not merely putting forward one, requires that it is at least made plausible by the disclosure in the application that its teaching solves indeed the problem it purports to solve. Therefore, even if supplementary post-published evidence may in the proper circumstances also be taken into consideration, it may not serve as the sole basis to establish that the application solves indeed the problem it purports to solve."
•  T 1545/08 states in r.67: "According to established case law (Case Law of the Boards of Appeal of the European Patent Office, 6th edition 2010, I.D.4.6) post-published documents can be taken into consideration to confirm (or not) whether what appears to be a plausible solution at the relevant date is indeed a solution and hence whether the claimed subject-matter indeed solves the problem it purports to solve."
• It appears that the Enlarged Board here puts the answers to the questions first.
• "The boards of appeal and the administrative departments of the EPO regularly apply the "problem and solution approach" in the course of deciding whether or not a claimed subject-matter involves an inventive step and fulfils the requirements of Article 56 EPC." (r.25)
•  The Enlarged Board here does not indicate that using the PSA is mandatory.
• "This approach consists essentially of the following methodologic steps:  
"(a) identifying the "closest prior art";
(b) comparing the subject-matter of the claim at issue with the disclosure of the closest prior art and identifying the difference(s) between both;
(c) determining the technical effect(s) or result(s) achieved by and linked to these difference(s);
(d) defining the technical problem to be solved as the object of the invention to achieve these effect(s) or result(s); and
(e) examining whether or not a skilled person, having regard to the state of the art within the meaning of Article 54(2) EPC, would have suggested the claimed technical features in order to obtain the results achieved by the claimed invention."
• The Enlarged Board refers to CLBA I.D.2.  Curiously, the PSA is stated with four steps in that document. The EBA adds step B, comparing the subject-matter of the claim at issue with the disclosure of the closest prior art and identifying the difference(s) between both.
•  As to step E, I think a more conventional statement is: examining whether or not a skilled person,  would have applied the claimed distinguishing technical features in order to solve the objective technical problem as defined under D.
• The above summary of the PSA is clearly not intended to be binding.
• "The technical problem must be derived from effects directly and causally related to the technical features of the claimed invention."
• More particularly, from the differences as defined under B.
•  "An effect could not be validly used in the formulation of the technical problem if the effect required additional information not at the disposal of the skilled person even after taking into account the content of the application in question"
• At first sight, this seems a consideration of sufficiency. The sentence comes from the headnote of T 1639/07.  To quote the relevant paragraph: "The appellant [applicant] put forward the argument that the user could make an "educated" guess of the print limit. The assumption that this would guarantee the success of the invention is speculative. The objective technical problem must be derived from physical, chemical etc effects directly and causally related to the technical features of the claimed invention. An effect cannot be validly used in the formulation of the technical problem if the effect requires additional information not at the disposal of the skilled person even after taking into account the content of the application in question. There is certainly not enough information in the present application for determining an appropriate print limit in any reliable and reproducible manner."
•  "Step (c), which is the most relevant in the context of the present referral, requires that, in order to determine the objective technical problem, the technical results and effects achieved by the claimed invention as compared with the closest prior art must be assessed. [It] rests with the patent applicant or proprietor to properly demonstrate that the purported advantages of the claimed invention have successfully been achieved."
• So the burden of proof of the technical effect being actually achieved rests with the proprietor, not the opponent, in opposition proceedings. 
• The EBA states that this is "[a]ccording to the established case law of the boards of appeal (see CLB, 10th edition, I.D.4.2, and the decisions therein [)]", but I don't see the burden of proof discussed there. It is in para I.D.4.2 of the 9th edition.
• It is discussed further in I.D.4.3.1 in the 10th edition: "If the patent proprietor/applicant alleges the fact that the claimed invention improves a technical effect, then the burden of proof for that fact rests upon him"
• Finally, the Enlarged Board does not really explain why we care about the formulation of the OTP at all. As explained in T 939/92 r.2.5.3: "the answer to the question as to what a person skilled in the art would have done depends on the result he wished to obtain", i.e. on the formulation of the objective technical problem. Under the PSA, "This means asking not whether the skilled person could have carried out the invention, but whether he would have done so in the expectation of solving the underlying technical problem" (CLBA I.D.5). The CLBA adds "or in the expectation of some improvement or advantage" but then step E is completely disconnected from the objective technical problem formulated under D so that can not be correct.
• T 939/92, r. 2.4.3: "The next step is then to decide whether the state of the art suggested the claimed solution of this technical problem [i.e. the objective technical problem] in the way proposed by the patent in suit"
• To anticipate the Enlarged Board's analysis of plausibility, I wish to recall that CLBA, I.D.4.4.2 also states that: "As a matter of principle, any effect provided by the invention may be used as a basis for reformulating the technical problem, as long as that effect is derivable from the application as filed (T 452/05, T 698/08, T 188/09, T 2483/11, T 605/14, T 1196/12, T 1406/15). A reformulation of the problem also may be appropriate if an alleged effect of a described feature could be deduced by the skilled person from the application in the light of the prior art or if new effects submitted subsequently during the proceedings were implied by or related to the technical problem initially suggested. In relation to new effects, it was not permissible to change the nature of the invention". This is further discussed extensively in CLBA I.D.4.4.3
• The requirement that the technical effect has to be derivable from the application as filed is in contrast with (or at least in tension with) the principle that "the technical problem can be reformulated, and in certain circumstances actually has to be reformulated, since the only factor of importance in determining the problem objectively is the result actually achieved in relation to the closest state of the art" (I.D.4.4.) 
• This case law (I.D.4.4) originates from the concept of reformulating the technical problem as set out in the patent (or application), typically in less ambitious terms, in order to correspond to a technical effect actually achieved by the differences between the claimed subject-matter and the closest prior art.

EPO 

The link to the decision is provided after the jump.

https://www.epo.org/law-practice/case-law-appeals/recent/g210002ex1.html

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