b) Inventive step 

In T 547/88 inventive step was contested. Although the board had asked the parties to issue a joint protocol stating what tests had to be done and under what conditions, each party had in fact conducted its own experiments and obtained contradictory results. It was therefore not possible for the board, on the basis of these tests, to conclude definitively that no inventive step was involved. The board held that in such a case the patent proprietor should be given the benefit of the doubt with regard to the relevance of the claimed features to the problem to be solved. Moreover, since the prior art did not suggest the subject-matter of the contested claims, that subject-matter implied an inventive step. The patent was therefore maintained.

The burden of proving that the claimed method leads to the advantageous effects mentioned in the patent in suit rests with the patentee. In the absence of any corroborating evidence that these advantageous effects were obtained, the alleged effects are not to be taken into account when assessing inventive step (cf. T 97/00; see also T 1409/04).

In T 862/11 the appellant (opponent) failed to submit comparative tests in support of its own assertion that an improvement was implausible owing to the lack of any evidence. In the absence of such tests, however, it failed to convince the board, which therefore regarded the problem as solved, and saw no need to reformulate it (see also in this chapiter III.G.4.2.2 "Test and experimental evidence").

In case T 655/13 the examining division did not precisely identify the passage of document D1 (technical journal in Japanese as a prior art publication) which disclosed the feature in dispute and at the same time did not provide a translation of at least the referenced longer section of said Japanese document. The board recalled that in examination proceedings, as far as issues relating to patentability requirements are concerned, the burden of proof – and consequently the onus of presentation of the relevant facts – lies initially with the examining division, which must provide evidence and facts to support its objection (see T 578/06). As a rule, the applicant can dispute in a general way a general statement made by the examining division, which then in turn is obliged to raise a more detailed objection. In order to give an applicant a fair chance to challenge the findings of the examining division, the latter should, as a rule, at least once identify where in the closest prior-art document each of the features of the claim in suit is disclosed (see e.g. the obiter dictum in T 70/02).

See chapter I.D. "Inventive step".