2.8. Common general knowledge
2.8.5 Proof of common general knowledge
Where an assertion that something is common general knowledge is challenged, the person making the assertion must provide proof that the subject-matter in question is in fact common general knowledge (T 438/97, T 329/04, T 941/04, T 690/06, T 2132/16). In the case of any dispute as to the extent of the relevant common general knowledge this, like any other fact in contention, has to be proved, for instance by documentary or oral evidence (T 939/92, OJ 1996, 309, see also T 766/91, T 1242/04, OJ 2007, 421; T 537/90, T 329/04 and T 811/06). The proof is regularly supplied in citing literature (T 475/88). According to T 766/91 and T 919/97, evidence of general technical knowledge need be submitted only if the latter's existence is disputed. Exceptionally, it is enough to give cogent reasons based on readily verifiable facts, e.g. for knowledge that is "notorious", indisputably forms part of the common general knowledge or belongs to the "mental furniture" of the skilled person (T 415/21).
In ex parte case T 1090/12 the appellant drew attention to the Guidelines (G‑VII, 3.1 – November 2016 version) that reads: "an assertion that something is common general knowledge need only be backed by documentary evidence (for example, a textbook) if this is contested" and submitted that this passage was binding on the boards of appeal when exercising the power of the examining division. In the case at hand, the board denied that it was obliged to provide written evidence and explained during the oral proceedings that its members knew from their work on previous cases that the features at issue were known to the person skilled in the art. It would therefore have been for the appellant to show an error in the board's appreciation, e.g. that one of the features at issue was in fact introduced into the art after the priority date of the application under appeal. There is also no general obligation on a board to provide documentary evidence for the existence of a piece of common general knowledge. In proceedings before the EPO, a board of appeal has to respect the right to be heard and to give reasons for its decision. In cases where a board refers to common general knowledge as state of the art, it is not obliged to provide documents in every conceivable case. It is also possible for a board to state what it deems to be known, and possibly where it is known from, in a way that puts the appellant in a position to try to convince the board that its findings are erroneous. Proceeding that way respects the party's right to be heard. In this respect, the request for referral of questions to the Enlarged Board was refused. According to T 1370/15 this also applies in inter partes proceedings.
In T 1540/14, another ex parte case, the board, after giving detailed reasons and summarising the case law on ascertaining the common general knowledge, concluded that there was not enough conclusive evidence to support the examining division's reasons for refusing the application for lack of inventive step because the features distinguishing its claim 1 from the closest prior art were obvious in view of the common general knowledge illustrated by two patent literature documents.
In ex parte case T 2101/12 the common general knowledge was the non-technical process of the signing of a contract at the notary's office. According to the appellant, the EPO has the burden of proving the content of the common general knowledge it relies on. The appellant had at no point disputed that the process mentioned by the board was indeed common general knowledge. No documentary evidence was required to prove the extent of the cited common general knowledge.
In T 1110/03 (OJ 2005, 302) the board stated that when evaluating evidence relating to the issues of novelty and inventive step it was necessary to distinguish between a document alleged to be part of the state of the art within the meaning of Art. 54(2) EPC 1973 – in the sense that the document itself was alleged to represent an instance of what had been made available to the public before the priority date of the opposed patent – and a document which was not itself part of the state of the art, but which was submitted as evidence of the state of the art or in substantiation of any other allegation of fact relevant to issues of novelty and inventive step. Only a document of the first kind could be disregarded on the sole ground that it was post-published; documents of the second kind did not stand or fall by their publication date even on issues of novelty and inventive step. Similarly a technical review article is by definition an account of the common general knowledge in the art prior to its own publication date – which could bear inter alia on the issue of enabling disclosure of a prepublished document and hence on the novelty of claimed subject-matter (T 1625/06, T 608/07, T 777/08).
In T 608/07 the respondent tried to query the relevance of D6 because it was published after the priority date of the patent in suit. The board stated that D6 related to published course material of a university and to subject-matter well known in the art for many years. Hence, albeit published after the priority date of the patent in suit, D6 provided indirect evidence for common general knowledge.
See also T 2196/15 for an example of difficulties in providing the common general knowledge.
- T 1249/22
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 found that the independent claims of the main request lacked an inventive step in view of common general knowledge evidenced by D5.
D5 was a book comprising a collection of individual papers on grid computing, all from different groups of authors, referred to as "chapters" by the editors of the book. The appellant argued that D5 was not evidence of common general knowledge and that each of the chapters of D5 represented a separate piece of prior art; the examining division combined several distinct elements from these chapters without providing any reasoning. The board agreed with the appellant that each of the "chapters" represented a separate piece of prior art, as they appeared to be self-contained papers which did not build on each other, unlike chapters of a textbook. Definitions given in one of these papers did not necessarily apply to the others. D5 rather resembled a conference proceedings volume including a collection of separate papers on a common topic. The mere fact that the papers were published in the same book with a single ISBN did not imply that the whole content of the book formed a single piece of prior art.
As to whether D5, or its individual chapters, were generally suitable as evidence for common general knowledge, the board noted that an allegation that a teaching was common general knowledge might be supported by specific evidence. The deciding body evaluates such evidence by applying the principle of free evaluation of evidence on a case-by-case basis (G 2/21). The board explained that while it might be relevant that the cited evidence was a "book" or a "textbook", this could not, on its own, be decisive, as no firm rules dictate which types of evidence are convincing.
The board further observed that information often appears in a textbook because it was common general knowledge when the book was drafted. However, this did not mean that all textbook content necessarily was common general knowledge or became so upon publication. In the decision under appeal, the examining division referred to Part G, Chapter VII, 3.1 of the Guidelines, in which it was stated that "[i]nformation does not become common general knowledge because it has been published in a particular textbook, reference work, etc.; on the contrary, it appears in books of this kind because it is already common general knowledge (see T 766/91). This means that the information in such a publication must have already become part of common general knowledge some time before the date of publication". The board noted however, that the cited decision T 766/91 only described what is "normally" accepted and what is "usually" the case. In a statement according to Art. 20(2) RPBA, the board explained that the Guidelines had lost this nuance when saying "must" in the passage cited above.
Regarding the examining division's reliance on chapters of D5 as evidence of alleged common general knowledge, the board considered the examining division's reasoning to be insufficient regarding what alleged common general knowledge it was relying on (R. 111(2) EPC). For instance, the examining division referred merely to the "known paradigm of message-based grid computing" without indicating which features of this paradigm were considered to be common general knowledge, despite appearing to rely on more than the knowledge of the existence of that paradigm when considering that all the features relating to the processing pipeline "form part of the common general knowledge of the skilled person".
Thus, the board concluded that the first-instance decision was not sufficiently reasoned within the meaning of R. 111(2) EPC. The case was remitted to the examining division for further prosecution under Art. 111(1), second sentence, EPC and Art. 11 RPBA and the appeal fee was reimbursed under R. 103(1)(a) EPC.