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According to the established jurisprudence, a surprising effect (advantageous effect or feature) demonstrated in a comparative test can be taken as an indication of inventive step. If comparative tests are chosen to demonstrate an inventive step on the basis of an improved effect, the nature of the comparison with the closest state of the art must be such that the alleged advantage or effect is convincingly shown to have its origin in the distinguishing feature of the invention compared with the closest state of the art (T 197/86, OJ 1989, 371; T 234/03; T 378/03) and alleged but unsupported advantages cannot be taken into consideration in respect of the determination of the problem underlying the application (see also Chapter I.D.4.2, alleged advantages; T 20/81, OJ 1982, 217; T 561/94).
In T 197/86 (OJ 1989, 371) the board supplemented the principles laid down in earlier decision T 181/82 (OJ 1984, 401), according to which, where comparative tests were submitted as evidence of an unexpected effect, there had to be the closest possible structural approximation in a comparable type of use to the subject-matter claimed. In the case in point the respondent (proprietor of the patent) strengthened support for his claim by voluntarily providing comparisons with variants which, although not expressly belonging to the prior art, differed from the claimed subject-matter only by the distinguishing feature of the invention. The board summarised its position by stating, that in cases where comparative tests were chosen to demonstrate an inventive step with an improved effect over a claimed area, the nature of the comparison with the closest state of the art had to be such that the effect was convincingly shown to have its origin in the distinguishing feature of the invention. For this purpose it might be necessary to modify the elements of comparison so that they differed only by such a distinguishing feature (T 292/92, T 412/94, T 819/96, T 133/01, T 369/02, T 668/02, T 984/03).
As early as T 35/85 the board had stated that an applicant or patentee may discharge his onus of proof by voluntarily submitting comparative tests with newly prepared variants of the closest state of the art identifying the features common with the invention, in order to have a variant lying closer to the invention so that the advantageous effect attributable to the distinguishing feature is thereby more clearly demonstrated (T 40/89, T 191/97, T 496/02).
In T 390/88 the board addressed the question of the circumstances under which the production of comparative examples was unnecessary. In the above-mentioned earlier cases the invention had been obvious prima facie because the products, although novel, were very close structurally to the prior art products. The case in point was different. Here, the board said that the production of comparative examples was not essential to establish inventiveness, as the invention had not been obvious from the outset (T 656/91).
In T 702/99 the board stated that in cases concerning products such as cosmetics, in which applicants or patentees seek to establish that their inventions have an improved "feel" over the prior art, or opponents seek to deny such an improved "feel", it is common for one or more parties to file evidence of comparative tests conducted by a number of persons. It is essential for such tests to be made under conditions which ensure maximum objectivity on the part of those conducting the tests and who may be required at a later date to give evidence in proceedings. It is always desirable that such tests can be shown to be "blind" and that they have been conducted in the strictest conditions; that the testers have had no part in the making of the claimed invention or research leading up to the invention or the patenting procedure.
In T 234/03 the board stated that to be of relevance in demonstrating that a technical improvement is achieved in comparison with the closest state of the art, any comparative test presented must be reproducible on the basis of the information thus provided, thereby rendering the results of such tests directly verifiable (T 494/99). This requirement implies, in particular, that the procedure for performing the test relies on quantitative information enabling the person skilled in the art to reproduce it reliably and validly. Vague and imprecise operating instructions render the test inappropriate and thus irrelevant.
In T 172/90 the comparative examples produced did not constitute suitable evidence of inventive step. The board said that the products adduced as a basis of comparison were commercially available and had evidently been selected at random. Technical progress shown in comparison with products of this kind could not be a substitute for the demonstration of inventive step with regard to the closest prior art (see also T 164/83, OJ 1987, 149; T 730/96).