D. Erfinderische Tätigkeit

In T 799/24 the invention concerned a method and device for analysing optimisation of vehicle body joint position. The aim of the invention was to provide an analysis apparatus for determining an optimal location of an additional welded point to be added to a portion to join a part to an assembly of parts in consideration of the load acting on the automotive body and of the inertia force acting on a fitting or lid component of the automobile during driving. Claim 1 of the main request concerned an "arithmetic processing unit" or a CPU together with a display device including elements which were computer-implemented or performed a "computer-implemented" method. The board noted that the first hurdle mentioned in decision G 1/19, which requires that the claimed subject-matter as a whole must not fall under the "non-inventions" defined in Art. 52(2) and (3) EPC, was overcome since claim 1 related to an "arithmetic processing unit" together with a display device.

The second hurdle, mentioned in decision G 1/19, is where, as part of the inventive step assessment, it must be established which features of the invention contribute to its technical character, by providing a technical effect in the context of the invention as a whole..

According to the board, the formulation in claim 1 of the main request that additional welded point(s) were "to be added" to the automotive body to improve its stiffness during driving at least implicitly specified a further technical use. The board considered it implicit from claim 1 that the additional welded points of which the locations were determined would be added to the automotive body.

In the board's view, since the use of the analysis results was defined in the claim as being "for automotive body designing", leaving it open which further steps, technical or not, were to be performed with the analysis results, a potential further selection of a particular automotive body might also be based on the visual characteristics or appearance of the automotive body. However, the board was of the opinion that the selection of the automotive body was, in addition, also restricted to the selected additional welded points to be added to the automotive body.

The board noted that the optimisation analysis on the welding candidates applied at least one of the load, of which magnitude and direction were different at each joining portion. An additional welded point or an additional welded location that satisfied the optimisation analysis conditions, including maximising absorbed energy, was selected.

The analysis results used in the automotive body designing were, for example, "automotive body displacement amount". The possible use by the user of the displayed analysis results might be a cognitive exercise such as selecting the automotive body corresponding to the lowest displacement amount (G 1/19), but the board considered that the step of selecting the additional welded points contributed to the technical character of the invention.

The board further noted that the additional welded points of which the locations were determined or selected were "to be added to the automotive body" ("to improve the stiffness of the automotive body during driving"). In the board's view this wording at least implicitly specified a further technical use (G 1/19)..

The board considered that, even if the automotive body was a "prototype" and the additional welded points were added to this "prototype", this "prototype" would still be a physical object having at least some of the features of an automotive body.

The board noted that the Enlarged Board in G 1/19 required a simulation to be "accurate enough" or a simulation that reflects "reality" "accurately enough". In the present case, the automotive model constituted by the automotive body frame model and the chassis model together with the welded points at the joining portion(s) was considered by the board to reflect an automotive body (as "reality") "accurately enough". The board concluded that the subject-matter of claim 1 and dependent claim 2 of the main request involved an inventive step.

In case T 136/24, the therapeutic effect of claim 1 was the treatment of prostate cancer in the specified patient group. Claim 1 was intended to define a new treatment option for mCRPC patients in the form of a cabazitaxel-based combination treatment.

The phase III clinical study (TROPIC) presented in the application was addressed with very detailed reasons in respect of assessment of sufficiency of disclosure, novelty and inventive step. Concerning inventive step, given the TROPIC study as the starting point and the formulation of the technical problem in view of the claimed therapeutic effect being credible, the issue decisive for obviousness was whether the person skilled in the art would have had a reasonable expectation of success with regard to the experimental arm of the TROPIC study.

The opponents argued that, for a second medical use claim, where the prior art disclosed that a clinical study with the same active agent(s) for the same therapeutic indication had been proposed or was underway, a reasonable expectation of success was generally implied by the mere fact that the study had been authorised, unless there was some evidence of a dissuading teaching in the prior art. In other words, the announcement of a clinical study established a legal presumption of reasonable expectation of success. No dissuading element (negative pointer) was known in the prior art. In addition, the opponents mentioned positive pointers..

The board was not convinced. The skilled person's expectation of success had to be considered in particular in relation to the TROPIC study's primary endpoint, which was overall survival. Success in the context of a clinical study means meeting the primary endpoint. The board reviewed the large body of decisions dealing with reasonable expectation of success, including in cases of second medical use where clinical studies were announced in the prior art. This case law mainly focused on balancing positive and negative pointers. The probative value of a clinical study announcement always depended on the particular circumstances of the case. Thus, contrary to the opponents' argument, the analysis of the jurisprudence of the boards did not lead to the conclusion that ongoing clinical studies automatically establish a legal presumption of success..

The approval of a clinical study does, therefore, not necessarily imply an expected positive outcome. As a consequence, the question of whether there was a reasonable expectation of success must be answered on the basis of the specific circumstances of the case. The case in hand related to a new cancer drug used in a new indication, and the situation was complicated by the further issue of resistance to taxanes. The crucial issue was whether, in view of the available information in the prior art, the skilled person had a reasonable expectation that cabazitaxel in combination with prednisone would be effective to improve overall survival..

The board examined in detail the positive pointers (a) to (f) and on this occasion inter alia addressed that under usual circumstances, the fact that a phase III clinical trial was carried out might indeed provide a pointer indicating a successful development path of a new drug/new drug application, however in the case in hand, the usual path of drug development was only poorly reflected. The board also stated that the fact that a study was nearing completion per se, in the absence of knowledge of the parameters selected for monitoring, was neither a positive nor a negative pointer when assessing expectation of success. In conclusion, the facts brought forward by the opponents as positive pointers would not have given rise to a reasonable expectation of success.

In case T 412/23, the invention related to a method for determining a suitable colour variant for painting a car without the need for expensive equipment and extensive colour fans. The only state of the art discussed by the appellant was the prior art discussed in the impugned patent itself (E0, E00, E15). Both parties agreed that E0 was the closest state of the art. The formulation of two partial problems was not appropriate.

According to the opponent (appellant), the skilled person would combine the teachings of the prior art discussed in the impugned patent in paragraphs [0002], [0005] and [0007] and therefore arrive at the subject-matter of claim 1. That is to say the skilled person would combine the teachings of E0, E00 and E15 especially because these different teachings were discussed in close relation to each other in the impugned patent, reflected the general common knowledge of the skilled person and could be easily combined with each other without technical difficulty.

The board essentially agreed with the reasoning of the opposition division. When solving a single objective technical problem, the skilled person could not combine in the present context the teachings of three documents at a single stroke, but must first combine the teaching of E0 with the teaching of one of the documents E15 and E00 and then, in a second step, combine the result of this combination with the teaching of the other one of the documents E15 and E00..

In other words, when the teachings of three documents are combined, this has to be done – in circumstances such as the present ones – step by step, i.e. in a first step, the teaching of another document is combined on the basis of the teaching or embodiment of the closest state of the art. In a second step, it must then be examined whether the skilled person would also combine the result of this combination with the teaching of the third document. In doing so, the context of the initial situation as well as the complexity and specific technical context of each document or embodiment has to be taken into account (see Catchword).

In the present case E15 taught the examination of texture only by using complex image processing software, while E0 and E00 taught the examination of colour only with the human eye from only one or two angles. The board noted that the reference to E15 and its content in paragraph [0005] was added during examination proceedings and was not part of the original application documents. Furthermore, E15 did not relate to the method described in paragraph [0007] at all. The observation that metallic effect paints presented particular challenges in colour matching and that texture must be considered to improve matching accuracy, originated from the patent itself and could not be regarded as prior art. Furthermore, from the context of the contested patent, it was clear to the board that E00 and E0 referred to different evaluation methods. E00 related to a basic method and involved a method with examination of a single angle and a single visual property. E0 related to a different, more sophisticated method with examination from two different angles and two visual properties. The board could not see how the skilled person would arrive at a combination of all claimed features by combining the teachings of E0, E00 and E15.

The board agreed with the opponent only insofar as the skilled person might combine the teaching of E0 with the teaching of E00 or E15. However, in a second step, the skilled person would not take into account the teaching of the other document, since, depending on whether the skilled person would first turn to a simpler or more complex teaching, they would not consider the more complex or overly simplified teaching in a second step. The board came to the conclusion that the person skilled in the art would not combine the teaching of E0 at the same time with the teachings of both E00 and E15, since in the latter the context was different from that in E0, being significantly more complex in one case (E15) and simpler in the other (E00).

In case T 1465/23, the opposed patent addressed the problem of securing wireless communications for hearing devices. The board was not satisfied that the technical effects mentioned by the respondent (proprietor) were credibly achieved by the claimed features over the whole scope of claim 1 as granted.

Given that the alleged technical effect was not credibly achieved and the board could not identify an effect either, it was not possible for the board to formulate an objective technical problem that was directly and causally related to the claimed invention, in particular to the alleged distinguishing features (b) to (h). The board recalled the principles established in G 1/19, that 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. 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.

The respondent argued that the principles of G 1/19 were limited to computer-implemented simulations and that the board should instead have applied the "ab initio implausibility" standard addressed in the referral case underlying G 2/21. This line of argument was not persuasive. Recalling the purpose of Art. 112(1) EPC, the board observed that the Enlarged Board in G 1/19 itself designated its findings in point 82 of the Reasons as a "general principle" and this confirmed that a technical effect must be achieved over the whole scope of a claim to be considered as the basis for the objective technical problem. The respondent further argued that the expressions "substantially all embodiments" in G 1/19 and "substantially the whole scope of the claims" in T 814/20 allowed for a more lenient application of the test "credibly achieved over the whole scope claimed". However, the board noted the concept of "substantially over the whole scope claimed" appeared to provide merely a "narrow safe harbour" for well-defined inventions that may have isolated, peripheral flaws; it could not rescue a claim that was fundamentally deficient such that the distinguishing features were considered to have no effect at all.

The respondent also 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. Reflecting on the two paths provided for in the established practice to overcome such an objection: amendment of the claim to a narrower scope by the patentee, or reformulation of the objective technical problem to a less ambitious one by the board, the board noted that in some instances there may be no credible technical effect whatsoever that could be attributed to the distinguishing features. In such a case, the board considered these distinguishing features to be an arbitrary or non-functional modification of the prior art, which cannot support an inventive step. Consequently, this particular way of applying the problem-solution approach did not represent a "failure" or an "incomplete application" of the problem-solution approach, rather it was its logical endpoint: the demonstration that the claimed differences provided no technical effect at all, i.e. no contribution over the prior art, constituted the very proof of their "obviousness". Overall, the board stated that if there was no technical effect that was credibly derivable from the wording of a claim on the basis of its distinguishing features, it was 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 constituted arbitrary or non-functional modifications of the available prior art which could not involve an inventive step within the meaning of Art. 56 EPC.

In case T 1065/23, the purpose of the invention was the provision of a pea protein composition comprising pea proteins having a low solubility. Such protein extracts had superior properties when used in processes for manufacturing bakery products and beverages.

Opponent 2 argued that as solubility was a relative property, it should not be taken into account for selecting the closest prior art. In the board’s view, this argument was not convincing. From the patent and the documents used for formulating the inventive-step attacks, it was evident that before the relevant date, the skilled person distinguished pea proteins having a "high" versus a "low" solubility. Thus, even in the absence of precise thresholds, the skilled person distinguished these protein forms. The board found that D2, which aimed to obtain proteins having a high solubility, did not represent the closest prior art. D12 could be considered the closest prior art..

Relying on the submission in opponent 1's statement of grounds of appeal, opponent 2 argued that experimental report D30 provided evidence that the alleged effects could not be achieved across the entire scope claimed. The desired nitrogen solubility index of less than 15% was thus not achieved across the entire scope claimed. The board stated, however, that opponent 1's new allegation of facts based on D30 was not only late filed but also raised new complex issues which should have been addressed during the opposition proceedings (not admitted – Art. 12(4) and (6) RPBA).

Opponent 2 considered that the underlying technical problem was merely the provision of an alternative method for extracting pea proteins and an alternative pea protein extract. The board did not agree. Starting from D12 and taking into account the effects shown in the patent, the underlying technical problem was the provision of a pea protein extract and a method for its manufacture, where the extract had a combination of a lower nitrogen solubility index, gel strength and viscosity, resulting in improvements in processes (for bakery products and beverages).

As to obviousness, opponent 2 also argued that the selection of the cut-off values 4.0 and 5.8 defining the claimed pH range was arbitrary and could thus not involve an inventive step. The experimental report D15 showed that the preferred low nitrogen solubility index of less than 15% mentioned in claim 11 was obtained not only when the pH was inside, but also when it was outside the claimed pH range, e.g. at a pH of 6.2. For this reason alone, the claimed subject-matter was obvious over the teaching of D12. The board was not convinced by this argument; Table 2 of D15 showed that all protein extracts heated at a pH of 6.2, i.e. above the claimed range, had a higher nitrogen solubility index than those heated at a pH within the claimed range. The results showed a clear pattern indicating the advantage of working within rather than outside the claimed pH range. For claim 1 to be inventive, it was not necessary to achieve a nitrogen solubility index lower than 15%. This was not an absolute threshold required for the method to be inventive. What was relevant was that the nitrogen solubility index obtained was lower than that obtained at pHs outside the range..

The fact that the cut-off values 4.0 and 5.8 of the claimed pH range might exclude lower or higher pH values suitable for achieving advantageous effects was not, as such, a reason to consider the selection of the claimed cut-off values as "arbitrary" and the claimed subject-matter as obvious in view of the prior art. It would be illogical if a claim defining a feature by reference to a range was considered to lack an inventive step for the sole reason that the invention could have been claimed more broadly, specifying a broader range. This would lead to the absurd situation that a claim defining a broad range involved an inventive step, whereas a claim defining a narrower range, falling within that broad range, did not (see also Catchword). What counts is that the available evidence makes it credible that subjecting a slurry containing precipitated pea protein at a pH within the claimed range to the claimed heating step induces effects which go beyond those obtainable by carrying out the method of the prior art.

Im Fall T 95/23 ging es um eine Durchgangsschleuse mit einem Eingang und einer Ausgangstüre, sowie einem Display und einer Aufnahmevorrichtung zur Erfassung biometrischer Merkmale einer Durchgang begehrenden Person, die frontal gegenüber dem Eingang in der Ausgangstüre integriert sind. Die Beschwerdeführerin (Einsprechende) hatte Argumentationslinien vorgebracht, die von D1 bis D6 als nächstliegendem Stand der Technik ausgingen. Die Kammer befand, dass ausgehend von D1, D3, D2 oder D5 der Gegenstand des Anspruchs 1 jeweils erfinderisch sei. In Bezug auf D4 führte sie aus, dass sich der beanspruchte Gegenstand von der aus D4 bekannten Vorrichtung dadurch unterscheide, dass die Kamera und ein Bildschirm in die Türe integriert seien.

Die Beschwerdeführerin hatte zur Frage des Naheliegens argumentiert, dass die Fachperson von einem allgemeinen generischen Ausführungsbeispiel ausgehen würde, das nicht unbedingt zwei separate Ausgänge hinter den Türen (von D4 Figur 1) haben müsse. In D4 werde die Erfindung sehr allgemein dargestellt und insbesondere beschrieben, dass die Ausgänge zu Zoll/Sicherheitskontrolle bzw. direkt zum Flugzeug verschiedene, rein optionale Varianten seien. Folglich könnten beide Türen auch zu ein und demselben Raum führen. Die Fachperson würde die allgemeine Lehre der Dokumente D1 und D2 aufnehmen und kleine Kameras und Displays in den Türen integrieren. Die Beschwerdegegnerin hatte argumentiert, dass dies nicht möglich sei, weil dann eine zu schleusende Person nicht wisse, durch welchen Durchgang sie zu gehen habe, während sich in D4 nach der Kontrolle nur die "richtige" Türe abhängig vom Ergebnis der Zugangskontrolle öffne.

Die Kammer war der Meinung, dass die Fachperson die Lehre der D1 und/oder D2 zwar in Betracht ziehen, aber aus folgenden Gründen nicht implementieren würde.

Bei der Prüfung der erfinderischen Tätigkeit sollte vorzugsweise von einem konkreten Ausführungsbeispiel ausgegangen werden, da die Fachperson bei einem generischen und unspezifischen Ausführungsbeispiel noch zusätzlichen technischen Aufwand für eine spezifische Ausarbeitung dieses Ausführungsbeispiels aufwenden müsste. Bei dieser Ausarbeitung würde der Fachmann letztendlich doch wieder auf die konkrete Lehre der detaillierten Ausführungsbeispiele im selben Dokument zurückgreifen. Die Fachperson würde sich also in der Regel für ein detailliertes Ausführungsbeispiel als Ausgangspunkt für die Prüfung der erfinderischen Tätigkeit entscheiden (s. Orientierungssatz). Die Kammer analysierte das einzige in D4 in den Figuren gezeigte und in der Beschreibung behandelte spezifische Ausführungsbeispiel und kam zu dem Schluss, dass der Durchgang eher verlangsamt würde, wenn der biometrische Abgleich durch Kameras (und Bildschirme) in jeder der beiden Türen stattfände, da die zu kontrollierende Person nicht im Voraus wüsste, bei welcher der beiden Türen sie herausgelassen werde.

Ferner sei es nicht unbedingt ohne technische Schwierigkeiten möglich, eine Kamera und einen Bildschirm, wie sie in D1 (bzw. D2) gezeigt sind, in die schwenkbaren Türen (von D4 Fig. 1) zu integrieren. Die in D1 gezeigten Kameras seien in den Zeichnungen relativ voluminös dargestellt. Die Kamera könne zwar in ein Display integriert werden, zum relevanten Zeitpunkt der Beurteilung der erfinderischen Tätigkeit (Anmeldetag des Patents im Jahre 2009) seien jedoch Kameras und Displays noch deutlich voluminöser und schwerer gewesen als zum Zeitpunkt der mündlichen Verhandlung vor der Kammer. Die Türen von D4 ließen die Fachperson darauf schließen, dass es sich um rahmenlose Türen handele. Eine Befestigung von Kameras und Displays in solchen rahmenlosen Glastüren sei technisch nicht einfach. Die Kameras und Displays in D1 hätten einen anderen technischen Kontext (massive Türen) und seien nicht unbedingt für die in D4 gezeigten Türen geeignet..

In Anbetracht der komplexen Umsetzung und insbesondere in Anbetracht der spezifischen Ausführungen in D4, die bei einer Integration von Kameras/Displays in die Türen den Durchgang eher schwieriger machen würden als vereinfachen, würde die Fachperson von solch einer Lösung absehen, insbesondere, da Komplikationen und Konfusion an einem Flughafen vermieden werden sollten. Der Gegenstand von Anspruch 1 sei erfinderisch gegenüber D4 in Kombination mit D1 oder D2. Gleiche Argumente gelten ausgehend von D6.

In T 1650/23, the invention concerned controlling the display of content items provided by a website or an application. In the system according to the invention, the content of a content item to be displayed is reduced to an amount that enables a user "to understand the target content item within the display duration".

According to the board, the distinguishing features related in part to the way information was displayed (i.e. presented) to the user. Presentation of information is as such not patentable under Art. 52(2) and (3) EPC. According to the case law of the Boards of Appeal, presentation of information as such, as non-technical subject-matter, cannot contribute to inventive step. Where a claim refers to an aim to be achieved in a non-technical field, this aim may legitimately appear in the formulation of the problem as part of the framework of the technical problem that is to be solved, in particular as a constraint that has to be met (T 641/00).

The appellant had argued that the distinguishing features related to technical concepts directed at determining in advance how and which information to provide in accordance with the display duration. Hence, these features were directed at the internal processing of the claimed information processing system and not at the mere presentation of information. The distinguishing features achieved the technical effect of reducing processing loads, quickly changing the content amount of the target content item, and causing the target content item to be displayed, as was recited in the description. By storing in advance multiple content variants corresponding to possible display durations, the processing was improved.

The appellant had further argued that all the distinguishing features contributed to these technical effects, since they were involved in the steps leading to the improved processing. They could thus not be considered to be mere "constraints" included in the objective technical problem. The objective technical problem had to be formulated as how to improve the processing of displaying a target content item, possibly with the addition of "such that it enables the visitor to understand display content thereof" to take into account the board's assessment that the present invention contained a part that was based on non-technical considerations.

The board could not recognise any improved processing compared to the conventional prior-art system, since changing the displayed information involved additional processing. The only effect of this additional processing was in the mind of the user, who was presented with different information than in the conventional prior-art system.

The concept of the invention was that of displaying, for a display duration below a threshold, a version of the target content item with a reduced content amount that enabled the visitor to visually understand the target content item within the display duration. The versions to be displayed should be "mutually related in display content but mutually different in content amount". This concept of the invention was based on non-technical considerations about a reduction of the cognitive burden of the user. It was thus a non-technical concept that could be included in the formulation of the technical problem.

In view of this, the distinguishing features solved the technical problem of modifying the conventional prior-art system to display, for a display duration below a threshold, a version of the target content item with a reduced content amount that enabled the visitor to visually understand the target content item within the display duration. The board held, that the skilled person facing the above formulated technical problem would immediately recognise the need to estimate the display duration and change the version of the target content item to be displayed if the estimated display duration is below a threshold. The board found that this was obvious and the subject-matter not inventive within the meaning of Art. 56 EPC.

In T 1632/22, In ex parte case T 1632/22, the application related to liveness detection in relation to authentication, e.g. when unlocking a phone based on a face image. The application proposed to categorise the images as a function of their "quality" and to use different liveness detectors for each quality type. The examining division concluded there was a lack of inventive step over D1 (face authentication).

With an amendment in substance to define the quality parameter used to define the quality type, the new feature of claim 1 was not disclosed in D1. The board saw only two differences between claim 1 and D1 which might support the presence of an inventive step, namely that the claimed method was used for liveness detection and that it considered also quality parameters other than those disclosed for the "specialized classifiers" of D1. For the appellant, D1 did not qualify as the closest prior art as it was concerned with authentication rather than with liveness detection.

In the board’s view, the novelty requirement provides that no patent can be granted for anything that is already known. The inventive step requirement raises the bar to a patent by also excluding matter which is obvious over what is known. That which is obvious to the skilled person cannot depend on anything that the skilled person does not know yet. In particular, what is obvious at the filing date of a patent application cannot depend on the content of that patent application. Conversely, an argument that a skilled person having regard to some piece of prior art will find something to be obvious cannot be rebutted on the basis of what the application says. In particular, the application cannot be invoked to limit the prior art under consideration or the expertise of the skilled person (their "art") on the basis of the stated "field of the invention". That essentially any piece of prior art can be considered in an inventive step analysis has been stated several times in the case law. The definite articles in the phrase "the person skilled in the art" in Art. 56 EPC are not meant to limit the relevant "arts". Any successful rebuttal of an inventive step objection must address the obviousness argument directly, without reference to the application.

It is a matter of efficiency when assessing inventive step to consider only persons skilled in arts related to the claimed invention, and, consequently, only prior art which such a person may have regard to. The board considered that a person skilled in some art may well have regard to prior art from a field which is not, in a narrow sense, their "own field". It is reasonable to assume, for instance, that persons skilled in one field will typically keep themselves informed about developments in related fields, and in this sense have regard to prior art in related fields. The board disagreed with T 646/22 and held that in principle, all problems which the skilled person would have addressed (or been asked to address) based on the prior art alone are valid ones. In the present case, the board assumed a person skilled in liveness detection methods. Such a person was, generally, interested in improving, or finding alternatives to, known liveness detection methods, based on the knowledge that known methods have known pitfalls. Liveness detection for authentication and authentication were closely related technical areas. The board noted that it was typical to try adapting developments in neighbouring fields to the own area of interest. It was certainly common practice in image processing, in particular when the images were of the same type. Thus, in the board's judgement, the person skilled in the art in liveness detection would have regard to D1 and would have reason to adapt its solution to liveness detection in a way leading to the invention according to claim 1 of the main request before the examining division. The current requests differed from that request ("quality parameter").

Finally, the board noted that during examination a relatively large number of documents were cited, some of them concerned with liveness detection, but were not discussed in the decision. A positive decision on inventive step could not be issued before at least these documents have been discussed (Remittal).

In T 646/22, the invention concerned input/output circuits and devices having physically corresponding status indicators. It followed from the conclusions on novelty that claim 1 as granted differed from D7 in that the two status indicators were capable of displaying different statuses and that the second status indicator comprised a transparent or translucent portion which surrounded the terminal opening (feature [1.9]).

The parties did not agree whether or not these features provided together a synergistic technical effect over D7. The opponent was of the opinion that the features distinguishing claim 1 from D7 were to be assessed separately as no synergistic technical effect was apparent. It would have been obvious to the skilled person to provide an additional status indicator in D7 to display a second status, if they so desired.

The board did not follow the opponent’s argument, mainly because it did not accept the formulated technical problem. The formulation of the technical problem took for a given that the skilled person wished to display a second terminal status of the terminal in D7 and that the only problem was how to do that. However, D7 did not envisage the display of any second status different from the status it already displayed. Hence, it could not be accepted that the only problem the skilled person would be faced with was how to display such a second status. In the board's opinion, in order to arrive at the claimed invention the skilled person when starting from D7 would first have to find a motivation for displaying a second status of the terminal, then to find a way to modify the described light sources such that they were capable of displaying different statuses and would only then have to start contemplating here to place an additional status indicator. The board considered that such activities went beyond what could be considered obvious for the skilled person in the present context.

Regarding feature [1.9], the opponent pointed to the description of D7, and argued that it would thus have been obvious for the skilled person to increase the size of given indicators if they wanted to improve visibility from all sides even further. The board did not follow the opponent in this respect, either. The formulated technical problem of improving the visibility of the status indicator was not related to the claimed invention..

The board stated that in the so-called "problem-solution-approach", the formulated objective technical problem should be one that corresponds to the technical effect obtained by the features distinguishing the claimed invention from the prior art. In other words, these distinguishing features should provide a technical advantage to the claimed invention that the prior art has not. In the present case, the terminal block of the claimed invention had no curved surface and there was no technical advantage related to the visibility of the status indicators from all sides. The problem of improving the visibility of the status indicators concerned only D7 and the I/O block it described, but was not a problem to be solved which related to any technical effect the distinguishing features provided to the claimed invention with respect to the prior art. The board, hence, found the opponent's argument not convincing.

The board proposed the following Catchword: The objective technical problem formulated in the context of the problem-solution approach should stem from a technical effect the distinguishing features provide to the claimed invention with respect to the closest prior art and not from a possible improvement of the prior art itself. 

In ex parte case T 1078/23, the decision of the examining division refused the European patent application for, at least, lack of inventive step; the examining division considered prior-art document D1 "to be the prior art closest to the subject-matter of claim 1". The appellant submitted that document D1 failed to disclose at least feature (c) of claim 1. So, document D1 – in spite of belonging to the same technical field as the present application – was not an appropriate starting point; the skilled person would rather choose document D5.

In the board’s view, the appellant's argumentation was not convincing. First, the board considered, in agreement with T 787/17, T 967/97, T 1112/19, T 449/23, and contrary to e.g. T 2057/12, T 2759/17 or the conclusions drawn in the first-instance decision of the Unified Patent Court UPC_CFI_1/2023 of the Central Division Munich (point 8.6), that no specific justification for the choice of a starting point for the assessment of inventive step is necessary if inventive step is to be denied, since the claimed subject-matter must be inventive over any state of the art according to Art. 56 EPC. Moreover, it is not the task of the skilled person, who is the person qualified to solve the underlying objective technical problem according to the problem-solution approach, to "choose a document as the closest prior art" (see e.g. T 1450/16). Selection criteria such as the "intended purpose" of the claimed subject-matter thus constitute merely a matter of efficiency for the deciding body.

The board added that a selected starting point might indeed turn out to not be suitable for denying inventive step if, for example, the resulting objective technical problem formulated on the basis of that starting point was an unrealistic or artificial one. But this did not mean that a starting point was to be disqualified as unsuitable right from the outset. Nor was it relevant in that context whether other pieces of prior art, such as document D5, were "relatively closer" to the claimed subject-matter, as argued by the appellant. 

Document D1 belonged to the application's technical field; specifically it disclosed features (a) and (b). The fact that D1 did not disclose feature (c), did however not preclude it from being an appropriate starting point for the assessment of inventive step.

In T 2010/22, the opposed patent concerned a headphone. It aimed at providing a headphone that does not completely shield the wearer off from the outside acoustic environment (referred to by the appellant as an "open headphone"). Given that the appealed decision only concerned novelty in relation to claim 1 of the main request, the board conducted its own inventive-step analysis.

The technical problem as formulated by the parties could not, according to the board actually be derived from effects directly and causally related to the technical features of the claimed invention.

The technical problem as formulated by the opponent relied on the implicit assumption that the closer "high-frequency driver" position as per feature (d1) directly translated to a closer acoustic source as perceived by the user’s ear. This assumption was reasonable in a basic, direct-radiating open headphone, but this was not explicitly required by claim 1.

In relation to the technical problem as formulated by the appellant, the board found that none of the other features specifically concerned an open headphone, contrary to the proprietor’s allegations. The proprietor claimed that some limitations that both drivers are located "off of the ear" of the user necessitated an open arrangement.

While the board acknowledged that it was a plausible understanding that there may be an open arrangement, it was not the only one that was technically sound. The skilled reader would in particular be aware that the phrase "off of the ear" did not necessarily exclude the presence of circumaural or supra-aural earcups. The board wished to clarify that the derivability of a credible technical effect (for the purposes of assessing inventive step) from the original description may, if at all, only be seen as a necessary requirement but not a sufficient one in view of e.g. G 1/19, point 124 of the Reasons (in particular the sentence: "[...] only those technical effects that are at least implied in the claims should be considered in the assessment of inventive step"). This means that the conclusions of G 2/21 cannot be used to bypass the fundamental requirement that the claimed features must credibly achieve the asserted technical effect: the decisive question remains whether the claimed features themselves, as understood by the skilled person, credibly bring about the technical effect over the entire scope claimed.

The board found it difficult to discern a technical effect which feature (d1) would credibly achieve over the whole scope claimed. As indicated by the board during the oral proceedings before it, this feature provided, at most, a practical arrangement of the high- and low-frequency acoustic drivers in terms of their relative positions. This meant however that the objective technical problem could, at best, be formulated as "how to practically arrange the high- and low-frequency acoustic drivers in the 'alternate embodiment' of D1 in terms of their relative positions". After its assessment of obviousness, the board concluded that the claims lacked inventive step.

In T 1468/21 the differentiating features solved the technical problem of providing a fully autonomous locker. Feature [C] related to a particular way of creating or determining the opening code and of storing it in the locker. Features [E], [F], [G] and [H] related to the specific set-up of an autonomous locker and its relationship with the remote server / central control system in order to correctly distribute the valid opening code to the user and synchronise the autonomous locker with the central control system. Although the locker was autonomous with respect to other structural units like a telecommunication network or the central control system, the opening codes in the locker and the remote server needed to be updated and synchronised after the delivered goods had been collected from the autonomous locker (or delivered to the locker). The new opening codes had to be generated and synchronised in both the locker and the remote server.

The five differentiating features [C], [E], [F], [G] and [H] were at least partially linked to the objective technical problem of rendering the locker autonomous; however, according to the board these features solved three separate technical "sub-problems" related to the cited technical problem. The first sub-problem related to the question of how the opening codes are created or selected. The second sub-problem related to the question of how to provide the same opening codes in the locker and the remote server. The third sub-problem related to the question of how to synchronise both separate units.

With regard to the examining division's reasoning regarding the "broken technical chain fallacy", the board held that it was true that the locker and the "one or more terminals (4, 4')" were not technically linked to each other. The user's intervention was required to inform the remote server, via the "one or more terminals (4, 4')", that the locker door had been opened and/or closed; however, in the present case, contrary to cases T 1670/07 and T 1741/08, there was no "broken technical chain", since the user only enters a single piece of objective information on the "one or more terminals (4, 4')" without any subjective choice or specific mental activity on their part.

In contrast to this, case T 1670/07 concerned optimising a shopping itinerary in which the vendors visited are selected according to the customer's user profile. The deciding board found that "the possible final technical effect brought about by the action of a user cannot be used to establish an overall technical effect because it is conditional on the mental activities of the user". In the deciding board's view, the technical effect, if present at all, depended on the user's reaction to the itinerary. The deciding board further explained, with reference to T 1741/08, that a user's reaction to a piece of (non-technical) information was considered to be a "broken technical chain fallacy".

T 1741/08 concerned a graphical user interface (GUI) designed to assist the user in making choices on the GUI. The user's reaction is not a simple confirmation of a status quo by the user to the technical system, but instead the user responds subjectively to the information provided on the GUI. The board in the case in hand found that in contrast to these decisions, it becomes evident that a "user's reaction to information" is more than simple "feedback" in response to an actual situation. A "user's reaction to information" involves a subjective mental act performed by the user that is clearly distinct from simple feedback. Moreover, the user will recognise the simple feedback as an essential element for correctly using a technical system, as in the present case in which the user has no choice (apart from deciding whether or not to provide the expected input). For example, case T 1741/08 was in contrast to this, in which a user's reaction to information consisted of a selection from several given and offered possibilities. It could be argued that the entire process is stopped by a missing or incorrect user input (i.e. simple "feedback"); however, in the present case, this process interruption should not be interpreted as a possible "broken technical chain" since it is not the technical chain that is broken by subjective intervention of a user involving its reaction to information; the technical chain is merely broken by the claimed technical system being incorrectly used by the user.

Therefore, inputting a single piece of information, which represents feedback on a factual, objective situation from a user within a technical process and does not require any mental activity on the part of the user, i.e. no specific reaction by the user to information, does not immediately lead to a "broken technical chain fallacy". The board therefore concluded that the examining division's decision was incorrect and that the subject-matter defined in claim 1 was inventive.

In T 2412/22 the invention related to continuous learning of a deep learning model for a specific autonomous vehicle and the appeal lay from the decision of the examining division to refuse the application for lack of inventive step over D1. In its communication the board indicated to the appellant that it tended to agree with the examining division that all differences were obvious starting from D1.

The appellant argued that the examining division's (and the board's) analysis was ex post facto. Without knowledge of the invention the skilled person had no reason to modify D1 in a way so as to arrive at the claimed invention. D1 and the claimed invention were conceptually different and pursued different objectives. The claimed invention focused on continuous learning for a specific autonomous vehicle, the model retrained with specific video data and stored in a library for efficient fine-tuning. The selection step ensured the proper model was selected and updated. In contrast, D1 focused on real-time adaptation, where a (single) generic stock model was adapted to a driver on the vehicle itself during operation of the vehicle. The appellant disputed that storing a stock model implied a library, and even if that were the case, there was no need for a selection step from a "library" with a single entry.

The board noted that the appellant's description of the invention differed from the claimed invention, which was broader and less detailed. The continuous learning aspect was not part of the claim, and the library's content was not defined as dynamic. The selection of a model from the library was broadly formulated, including methods such as basing selection on vehicle type alone. The claim therefore covered providing a deep learning model to an autonomous vehicle based on a static library, where a managing device selected and retrained a model using vehicle video data before transmitting it to the vehicle. Although the library might not be strictly necessary, it was something that the person skilled in the art would certainly consider.

For inventive step, however, the question was not what D1 disclosed, but how the person skilled in the art would modify it, e.g. in order to improve it. In general, the person skilled in the art would consider well-known alternatives and in the case in hand the board was convinced that the person skilled in the art would consider the alternative of performing the adaptation on a central server rather than onboard the vehicle. It concluded that the person skilled in the art would arrive in an obvious manner at subject matter falling within the scope of the claimed invention. Therefore, claim 1 of the main request lacked inventive step.

With regard to the auxiliary requests, the appellant had also submitted that to arrive at the invention starting from D1 a number of modifications were needed. There was no reason for the person skilled in the art to perform all of them. The added features, in particular in the fourth auxiliary request, further increased the already large number of differences over D1.

The board remarked that the number of differences over a certain piece of prior art was neither decisive nor a reliable indicator for the presence of an inventive step.

First, the number of differences itself might be deceiving. One modification might imply or make obvious several other differences. For instance, as in the case in hand, performing the computations on a server instead of on the user vehicle, implied data transmission, and with it a host of other associated "differences" which might or might not be specified in a claim, like an antenna, a transmission protocol, etc. A library implied storage, indexing, a retrieving mechanism and so forth. Also, in complex systems it was very easy to accumulate a large number of individual differences while simply considering the different options available to the person skilled in the art.

Secondly, whether several modifications combined to provide an inventive overall contribution did not depend on their number. For instance they might be obvious solutions to independent, "partial problems".

Ultimately, the board held that the claimed invention had to contain a (new and) non-obvious technical teaching, which it did not see reflected in any of the requests on file. The abord thus concluded that the auxiliary requests, as the main request, were not allowable for lack of inventive step.

In T 746/22 both the opponent and the patentee had appealed against the interlocutory decision of the opposition division maintaining the European patent in amended form.

Regarding independent claim 15 of the main request, both parties agreed with the board's finding that feature F2 was the only distinguishing feature in view of the objective lens described in table 1 of D4 (closest prior art). F2 defined a mathematical relation between the focal length of a "first rear positive lens" (f3) and the total focal length (f) of the five lenses of the claimed objective lens system.

The board was unable to see any effect of feature F2 other than to arbitrarily define a mathematical relationship between the focal length f3 of one of the lenses of the objective lens system with respect to the total focal length f of the objective lens system. However, in the present case, where the optical parameters of the claimed objective lens system were only very incompletely defined, the selection of a maximum value of f3 when f was fixed, or the selection of a minimum value of f when f3 was fixed, did not provide a technical effect relevant to the claimed invention.

In view of the absence of any relevant technical effect related to the feature F2, the board found that no objective technical problem solved by feature F2 could be defined, and as was explained in T 176/97 , if the distinguishing feature of a claim has no effect of technical relevance on the claimed subject-matter and does not credibly solve an objective technical problem, then no inventive step can be based on it. In the present case, the objective lens system of claim 15 was considered to be no more than an arbitrary modification of the objective lens system of D4, which did not involve an inventive step within the meaning of Art. 56 EPC.

The patentee argued that starting from the precise lens design in Table 1 of document D4, a skilled person would have a “perfect” lens design and thus no reason to modify any parameters without using hindsight from the invention. However, the board found this argumentation unconvincing because it assumed that, starting from the objective lens system disclosed in table 1 of D4, the skilled person would need a concrete incentive to modify it in a certain direction. This overlooked the point that the difference between the lens systems of claim 15 and of D4 was only an arbitrary modification of the lens design of D4. The question of whether there was a motivation to change the lens design of D4 did not arise in the present case. An arbitrary change to the lens design resulting in no relevant technical effect was in itself devoid of any inventive step.

Claim 1 of the first auxiliary request also lacked an inventive step in view of D1 in combination with D4. The patentee had argued that D1 already disclosed a perfectly optimised lens system and that the objective lens system of D4 was no better than that of D1. Again, the board was unable to follow the patentee’s argument that only with hindsight would the skilled person consider replacing the lens of D1 with the lens of D4. D1 merely disclosed a general lens without further details of its optical characteristics. Thus, it was not hindsight, but simply the fact that the teaching of D1 was put into practice that leads the skilled person to search for a specific lens design and eventually find the objective lens system of D4. As with claim 15, the feature at issue in claim 1 provided no technical effect other than arbitrarily modifying the lens design of D4. Therefore, this distinguishing feature did not contribute to inventive step. The subject-matter of claim 1 of the second and the third auxiliary requests lacked an inventive step in view of D1 in combination with D4 for the same reasons.

In T 201/21, the prior art disclosed a system for verifying authentication and ownership of a physical article. Each article included a label having a unique authentication code, pre-stored on a server database. The authentication code can be used to verify authenticity of an item by sending a query to a manufacturer's server. When a transaction takes place, the merchant registers ownership of the item by sending a registration request to the server including the article's unique code and a generated unique number. The registration only takes place if the code and number are not already associated with another sale.

Claim 1 differed from the prior art essentially in that card numbers are pre-stored in the central database and provided to the merchant on a brand property card (BPC), in that the database is populated with point of sale data upon entry of the numbered cards at a point of sale, in that a BPC card is provided to the user and its number is combined by the merchant with the unique identifier code in a registration request, and in that the registration is only possible if both the BPC card number and unique identifier code match a number and a code stored on the server and not associated with a sold physical article.

The appellant had argued that these features increased the security of the authentication method by providing a second authentication factor. In particular, it was argued that "... the combination of ... pairing [of the unique card and article numbers] in the database and the use of numbered cards that are not initially paired with particular physical items, results in ... strong authentication of physical articles". Moreover, they guarantee that the merchant has the authority to register the sold articles in the database.

The board found these arguments unconvincing. It regarded the general idea of protecting a transaction, here a registration, with a password as non-technical and also well known. The board further considered that the idea of using a predefined set of one-time passwords for user or merchant authentication also lacked technicality. Even when considered technical, this feature could not support an inventive step, as it corresponded to the well-known transaction authentication number (TAN) authentication procedure commonly used in online transactions. Making use of a server to store and verify the passwords or TAN numbers and of cards for distributing these to the merchant and customers was a straightforward implementation of this known procedure on well-known means.

The appellant had argued that the invention addressed the sales of luxury goods where customers appreciate tangible objects, such as certificates on elegant cards, and formulated the objective problem as "how to make the use of security tokens more attractive to a given population".

The board did not consider this an objective technical problem, as its formulation depended on the user's subjective preferences or expectations. From a technical point of view, the cards of claim 1 were merely a support for providing the merchant with the unique numbers to be used for the registration procedure. This was considered to be an obvious implementation possibility. Accordingly, the board concluded that claim 1 of the sole request lacked an inventive step over the prior art.

In T 1439/21 the application related to an automated elderly insurance scheme. The board emphasised that for deciding whether a feature is technical or not for assessing inventive step under the EPC, it is not relevant which person makes the contribution in real life. In real life, a person skilled in financial mathematics will have some notions of technical aspects, and the computer expert working for an insurance company will have some notions of business aspects of insurance schemes.

Instead, it is relevant whether the feature provides a technical effect and thus contributes to the solution of a technical problem or not or, in other words, whether it falls into the realm of the fictitious business person or the fictitious technically skilled person.

The board also noted that the use of technical terminology did not confer technical character. The terms "components", "measurement parameters" or "triggers" may sound technical. Similarly, the "dynamic monitoring" of these parameters or triggers by means of "measurement systems" conveys the impression that physical parameters are measured by technical devices.

In the context of the application, however, these terms do not represent any technical features. For instance, the "risk exposure components" are, in the context of the application, insured persons. In a similar manner, the "measurement systems" are not technical measuring devices. Instead, they may simply be hospital entities reporting patient data to the insurer.

Thus, the terms used in the application that in a technical context would have had a technical meaning instead have, in the insurance context of the application, a non-technical meaning. Therefore, the "technical" terminology used in the application for some aspects of the insurance scheme does not lend any technical character to the respective features in substance. Instead, it only creates a misleading appearance or perception of technical character.

As a result, the board could not see any interaction between the features defining the dynamic insurance scheme and the networked computer system used to automate it. However, an interaction between these features such that a technical problem is solved would have been required in order to acknowledge a contribution to technical character by non-technical features (G 1/19).

It follows from the above that the networked computer system is the only technical feature of claim 1.

In T 1249/22 the application related to the development – including the training – of an analytical model (e.g. a machine learning model) and the deployment of the trained analytical model on a "compute engine" so as to process live incoming data. The examining division had not selected a particular piece of prior art as starting point for the assessment of inventive step. The board did not find fault with this and in the case of an invention that amounted to a technical implementation of a non-technical method (provided the "non-technical method" did not contribute to the technical character of the invention), considered it to be a valid approach to

– identify, on the one hand, the non-technical method underlying the invention, and, on the other hand, the features of its technical implementation,

– define as "technical problem" to provide a technical implementation of that non-technical method, provided to the (technically) skilled person as a "non-technical requirement specification" which is part of the technical problem,

– assess whether the skilled person would have solved this technical problem by providing the claimed technical implementation (if so, the claim is not inventive).

The board stated that such an approach had been applied in several board of appeal decisions (e.g. T 1027/06).

In this approach, the choice of the IT infrastructure on which the non-technical method is to be implemented is considered to be part of the technical solution and the assessment of inventive step includes assessing whether it would have been obvious to the skilled person to select this IT infrastructure to implement the non-technical method. This is in contrast to starting from that IT infrastructure as "closest prior art" and formulating the (objective) technical problem as to provide an implementation of the non-technical method on that IT infrastructure.

In cases where the IT infrastructure used in the invention is a computer system that is commonly used to implement methods of the same kind as the non-technical method (e.g. a generic computer for most applications or a generic client-server architecture for e-business applications), there will be no difference in result between both approaches. There could however be a difference where the choice of a specific IT infrastructure might not have been a straightforward one for the given non-technical method (as noted in T 1325/17).

In any case, whichever approach is used, according to the board it is essential to be clear from the reasoning – at least implicitly – what the technical problem and the non-technical requirements included in it are. The examining division's argumentation was deemed deficient in this respect, mainly due to the fact that the examining division had identified "technical features" of the claimed subject-matter merely by underlining parts of the text of claim 5 and implying that the remainder of the claim were its "non-technical features". According to the board, this was normally not sufficient to clearly identify the technical and non-technical features of the claimed subject-matter.

The board also considered the examining division’s reasoning to be deficient, inter alia in respect of the technical features. It held that it is normally not possible to perform a meaningful obviousness analysis by completely disregarding the non-technical aspects of the claim, as they are normally the raison d'être for the claimed combination of technical features relating to their implementation. This is taken account of by including these non-technical aspects in the technical problem as non-technical requirements (in accordance with T 641/00, headnote II).

In T 688/05 similar considerations were expressed by saying that features making no technical contribution "may well form the only logical link between technical features resulting from their implementation" and that "they must therefore be taken into consideration for the examination as to inventive step while at the same time not being permitted to contribute to it" (see also e.g. T 1027/06).

In some cases, it is possible to treat groups of technical features separately from each other, but this requires a proper definition of the respective partial technical problems solved by them and an explanation of why this approach is justified in the case at hand. It may also be possible to argue that a skilled person confronted with the general technical problem of providing a technical implementation of a given non-technical method, after having selected a particular IT infrastructure in a first step towards a solution, would necessarily have been confronted with several separate sub-problems arising when having to implement the non-technical method on that IT infrastructure (see e.g. T 1158/02). But none of this had been argued by the examining division. In summary, the board considered that for these reasons inter alia, the decision was not sufficiently reasoned within the meaning of R. 111(2) EPC.

In T 1865/22 the board determined that the objective technical problem was to provide an alternative stripping composition.

Considering obviousness, the board found that arbitrarily varying the concentrations of components in a composition, including changing the concentration of one component in favour or to the detriment of the other components, was routine for the skilled person. Such a measure did not involve an inventive step.

The respondent (patent proprietor) had also argued that the skilled person would not have reduced the amount of the coupling agent monoethylene glycol in example 2 of D7, because according to D7 high concentrations of the coupling agent were essential for the stripping composition to have an appropriate tolerance to water. Mainly because of this argument, the opposition division had acknowledged an inventive step based on D7 as the closest prior art.

The board stated that the mere fact that claimed subject-matter excluded a technical feature (here: the higher concentration of the coupling agent monoethylene glycol) disclosed in the closest prior art as being essential or advantageous for a technical effect (here: the advantageous effect of the higher concentration of the coupling agent monoethylene glycol on the tolerance to water) could not in itself establish the existence of an inventive step. Rather, in situations such as the present one, where the exclusion of the technical feature in question was the only feature distinguishing the claimed subject-matter from the closest prior art, it must be shown that the claimed subject-matter achieved said technical effect to an extent comparable to that of the closest prior art, even without this feature. Without such proof, the claimed subject-matter merely resulted in an obvious deterioration of the technical effect described in the closest prior art.

It followed that the subject-matter of claim 1 of the main request was not based on an inventive step over D7 alone and that the main request was not allowable.

At the oral proceedings before the board, the respondent had also submitted for the first time in the appeal proceedings that the distinguishing feature was associated with technical effects. The stripping composition (i) had a lower viscosity and, as a consequence of this, was easier to filter and (ii) caused less damage to the substrate upon incorporation of water during use. In other words, the stripping composition was more tolerant to water. The board decided not to admit these submissions (Art. 13(1) and (2) RPBA). The respondent's submissions at the oral proceedings constituted an amendment to its appeal case and there existed no exceptional circumstances in the case in hand (Art. 13(2) RPBA). The change of representative approximately three weeks before the oral proceedings does not qualify as an exceptional circumstance.

The board also noted that the respondent’s submission raised a complex issue. The application as filed did not mention anything about a reduction in viscosity or an improvement in filterability raised by the respondent in its submission. Against this background, the complex issue arose as to whether the respondent could rely on these effects at all for the assessment of inventive step (in light of G 2/21). In the board's view, this and a further complex issue also clearly spoke against the admittance of the respondent's submissions (Art. 13(1) RPBA).

Lastly, the respondent should have filed its submissions on the additional distinguishing feature "non-aqueous" and the two technical effects much earlier and not only at the oral proceedings before the board, i.e. at the latest possible stage of the appeal proceedings. Admitting these submissions would clearly have been contrary to procedural economy (Art. 13(1) RPBA).

In addition to the above, the board found that none of the auxiliary requests were allowable. The board ordered that the decision under appeal be set aside and that the patent be revoked.

In T 449/23, regarding claim 1 of auxiliary request 1 (claims 1 and 2 being identical to claims 2 and 3 of the main request, after claim 1 of the main request was deleted following a finding of lack of inventive step over D5), the board came to the conclusion that the alleged effects of the distinguishing features were not credible, contrary to the arguments of the patent proprietor. Hence, any alleged effects arising from this comparison could not be taken into account in the formulation of the objective technical problem. The patent proprietor also argued that the burden of proof lay with the opponent to demonstrate that the alleged technical effects were not present. The board disagreed, stating:

(a) that the legal burden of proof was the duty of a party to persuade the deciding body of allegations of facts on which the party’s case rested. In principle, a party must prove alleged facts (assertions) from which it infers a legal consequence, i.e. which establish the basis for the party's legal claims. Thus, the allocation of the burden of proof depends on a party’s substantive case.

(b) that to discharge its legal duty of persuasion, a party must prove the alleged facts by appropriate evidence to the required standard of proof. The party with whom the legal burden of proof lies therefore bears the risk that the alleged facts remain unproven, and thus that the deciding body will decide against that party and reject its legal claims. Thus, the legal burden of proof requires the production of appropriate evidence to persuade the deciding body to the required standard.

(c) that in principle the legal burden of proof does not shift. References in the case law to a shift of burden of proof relate to the so-called evidentiary/evidential burden of proof (see for this distinction T 741/91), the notion of which relates to the state of the evidence produced in the course of proceedings. Once the party bearing the legal burden of proof has adduced sufficient evidence to support its allegations of facts to the required standard of proof, the onus is on the adverse party to rebut the asserted facts with appropriate evidence. Otherwise, the adverse party risks that the deciding body is persuaded of the existence of the facts and allows the claims. Thus, if the party having the legal burden of proof has made a "strong case" by filing convincing evidence, the onus of producing counter-evidence shifts to the adverse party. However, this does not mean that the legal burden of proof is on the adverse party to prove the non-existence or the contrary of asserted factual allegations. It is sufficient that the adverse party raises substantiated doubts that prevent the deciding body from being persuaded of the existence of the alleged facts.

(d) that in opposition and opposition-appeal proceedings, each of the parties carries the legal burden of proof for the asserted allegations of facts on which their respective substantive case rests. As regards an alleged lack of inventive step, the burden is on the opponent to adduce appropriate prior art which – when following the established substantive test, i.e. the problem-solution approach – persuades the opposition division or the board of the obviousness of the solution provided by the subject-matter claimed. On the other hand, if the patent proprietor asserts that, in comparison to the prior art, there is an advantage or effect giving rise to a more ambitious formulation of the objective technical problem than that presented by the opponent and hence to an inventive step, the burden of proving this advantage or effect to the required standard of proof is on the patent proprietor. The mere assertion in the patent specification of an advantage or effect cannot be regarded as evidence of such an assertion.

The board listed a number of decisions (T 97/00, T 355/97, T 1097/09, T 1392/04), in which the underlying circumstances were comparable, confirming these principles. The board also observed that T 1797/09 submitted by the patent proprietor remained a singular decision not followed. The subject-matter of claim 1 of auxiliary request 1 lacked inventive step.

In T 1272/22 the appellant (opponent) and respondents (patent proprietors) disputed whether there was a synergistic effect between the distinguishing features, even if it were considered they served the same purpose. The board, applying Headnote II of G 2/21, could not see that the skilled person would have derived the synergistic technical effect referred to by the respondents when considering the application as originally filed. There was no explicit mention of any relationship between the two features and the position of the critical section for the efficiency of the connection, which the respondents had also relied on in its arguments in support of there being synergy, was not defined in the contested patent. The alleged synergy did not appear to the board to be derivable by the skilled person from the application as originally filed and it therefore held the partial problem approach was thus justified in the case in hand.

In T 2463/22 the opposition division had held that the prior uses had not been proven beyond reasonable doubt (up to the hilt), in particular with regard to whether the products of the prior uses had actually been delivered. The parties before the board focused on which standard of proof had to be applied in view of G 2/21 and T 1138/20 and whether the applicable standard had been met. In the respondent-proprietor’s view, T 1138/20 was an isolated decision, not compatible with G 2/21.

On the required standard of proof, the present board observed that G 2/21 recognised that different concepts as to the standard of proof had been developed in the case law. According to T 1138/20 only one standard should be applied, namely "the deciding body must be convinced, taking into account the circumstances of the case and the relevant evidence before it, that the alleged fact occurred".

In the present board's view, under the principle of free evaluation of evidence, it was always decisive in the evaluation of evidence that the members of the deciding body were personally "convinced". Moreover, they had to always be convinced of whether, as stated in T 1138/20, "the alleged fact has occurred". The board stated this was true regardless of which standard of proof was applied. The standard of proof refers to the nature or degree of conviction that the members of the deciding body must have to be satisfied that an alleged fact occurred (see T 832/22).

According to the board, and with reference to a UK House of Lords decision, two important aspects had to be stressed. Firstly, that the standard of proof is related to the required degree of conviction of the members of the deciding body. Secondly, that it is not related to what is evaluated by the deciding body. Hence, also when a lower standard of proof such as the balance of probabilities is applied, the deciding body must assess whether or not the alleged fact indeed occurred. In other words, also when such a standard of proof is applied, the question is not whether the alleged fact might have occurred with some probability. The board considered G 2/21 (points 31 and 45 of the Reasons) consistent with this understanding.

The more specific question as to whether there was only a single standard of proof or more than one could be left unanswered according to the board. The board held that if the deciding body was convinced beyond reasonable doubt that an alleged fact had occurred, there was no need to decide how many standards of proof there were and which one was applicable (see T 832/22).

The board then gave some consideration to the assessment of factual allegations using the beyond reasonable doubt standard of proof. The European Patent Organisation being an independent international organisation, the board stated the standard had an autonomous meaning within this autonomous legal order. Secondly the board agreed with T 832/22 that it seemed expedient to focus on the term "reasonable".

The board then considered the prior uses, focusing especially on prior use relating to the sale of product 5 (sample of a powder mix from a specific lot number), the content of the sample and whether it was available to the public. In view of all the information (including invoices, affidavit, emails, test report, excerpt from database), which also involved evidence provided by a third party (the buyer), the board was convinced beyond reasonable doubt that product 5, with a specific lot number, was sold prior to the effective date of the patent. Since it had also been shown that product 5 disclosed all features of claim 1, lack of novelty prejudiced the maintenance of the patent as granted. Concerning the third auxiliary request, product 5 was suitable for use as closest prior art. The board referred to the reluctance sometimes in the case law to treat an object of a prior use as the closest prior art. Often, there was neither information on what the object did and what properties it had in the technical environment in which it was applied nor on how the process for its manufacture could be modified. These considerations indeed spoke against regarding a prior use as a suitable starting point for assessing inventive step. In the case in hand however, the skilled person was faced with a different situation. The board concluded that the third auxiliary request did not involve an inventive step. The decision of the opposition division was set aside and the patent revoked.

In T 356/22 the invention sought to provide dosage forms of pomalidomide having advantageous physical and pharmaceutical properties, amongst these being stability. Starting from the pomalidomide composition of claim 22 of closest prior art D1, the differentiating feature was the presence of both mannitol and starch. The decision under appeal was that of the opposition division finding that the patent in suit met the requirements of the EPC.

The respondent (patent proprietor) effectively considered that, since there were no stable dosage forms shown in D1 which could serve as comparator, the achievement of a certain level of stability independently of any comparison with the prior art could be taken into account for the assessment of inventive step. The board did not agree; the circumstances of the case did not justify that the respondent be exonerated from their burden to properly demonstrate that the purported technical effect of the claimed invention had successfully been achieved in comparison with the prior art. That the disclosure of D1 was generic in some respects did not mean that it was speculative or insufficient, nor allowed the assumption that the formulations of D1 suffered from a lack of stability. The mere fact that D1 did not contain any prepared and tested specific formulations of pomalidomide did not change this conclusion; for the purposes of inventive step, the teaching of the prior art is not limited to prepared and tested examples.

The board confirmed that an inventive step could be acknowledged to a selection if this selection was connected to a particular technical effect, and if no hints existed leading the skilled person to the selection. This however supposed that this particular technical effect was convincingly shown for the entire selected subset of formulations by a meaningful comparison with other formulations falling within the ambit of D1.

The respondent cited several decisions to support their view that, when the prior art was unspecific, the achievement of a technical effect per se could be taken into account for the assessment of inventive step. The board firstly noted that in all the cited cases, experimental data were presented in respect of a differentiating feature (citing T 1193/18, T 2342/19, T 2200/17, T 1126/19). But more importantly, the board did not agree that D1 was unspecific; the claimed active ingredient and two excipients were explicitly recited and part of a limited number of emphasised alternatives in D1.

It had to thus be assessed whether the evidence on file convincingly demonstrated that the selection was associated with a technical effect over the pomalidomide formulations of D1, and whether this effect credibly arose over the whole claimed scope. The board did not consider that the application as filed credibly demonstrated the technical effects of improved stability or improved suitability for clinical use for the claimed selected formulations in comparison with D1.

The problem to be solved was thus seen in the provision of an alternative pomalidomide oral dosage form. Since the claimed selection was not shown to be associated with any technical effect, the board found that this selection was arbitrary and did not involve an inventive step. The board noted that considering the problem was only formulated as the provision of an alternative, the lack of preference expressed in D1 for the features selected in present claim 1 did not establish an inventive step, because the chosen alternative was not shown to be any more suitable than the others considered in D1.