Wednesday, 31 March 2010

T 1333/07 – You Can Disprove Effects Without Experiments

[5.1] During the oral proceedings (OPs) before the Board, the [patent proprietors], after having been informed that the main request was not considered allowable, pointed out that if the reason for the rejection of the main request was the lack of evidence for a technical effect, then it regarded this finding of the Board as amounting to a fundamental violation of A 113, because the superior technical effect of the claimed screw extruder had not been challenged by the opponent on the basis of any substantive data and the existence of such an effect was challenged for the first time by the Board during the OPs without acceding to the [patent proprietors’] request to remit the case to the Opposition Division (OD) to afford the [patent proprietors] an opportunity to provide such evidence.

[5.2] The [patent proprietors’] assertion that the technical effect had never been challenged by the [opponent] is not in agreement with the facts.

[5.2.1] This point, i.e. the absence of a technical effect due to the use of multiple thread starts, was raised by the [opponent] in the Statement of Grounds of Appeal.

[5.2.2] Moreover, the Board in its preliminary opinion dated 22 July 2009 observed that it was to be discussed during the OPs, inter alia, what was the problem to be solved and whether the problem was actually solved within the whole claimed area. 

[5.2.3] The [patent proprietors] even commented on this issue in its letter of 25 March 2008 […] Finally, this issue was discussed in detail during the OPs before the Board. 

[5.3] In view of these facts, the Board can only come to the conclusion that the [patent proprietors] had sufficient opportunity to defend themselves against the attack of the [opponent] based on the absence of a technical effect of the claimed subject-matter, which it duly did before and during the OPs.

[5.4] Insofar as the [patent proprietors] relies on the lack of experimental data in the argument of the [opponent], it is noted that, according to the Boards’ case law, alleged advantages which the patent proprietor asserts, without offering sufficient evidence to support the comparison with the closest prior art, cannot be taken into consideration in determining the problem underlying the invention and therefore in assessing inventive step (see Case Law of the Boards of Appeal of the EPO, 5th edition, 2006, I.D.4.2). Additionally the evidence on file in fact challenges the assertions of the [patent proprietors]. As to the [patent proprietors’] argument that in opposition proceedings the burden is on the Opponent to disprove any effect accepted by the granting authority, this obligation has been met, as set out above. The Board notes in this respect that in order to meet this obligation it is sufficient to establish a reasonable case, which does not necessarily require experimental evidence. In the Board’s judgment, the [opponent] has met this obligation by casting considerable doubt on the unsupported allegations of the patent in suit.

[5.5] Article 12(2) of the Rules of Procedure of the Boards of Appeal (RPBA) states that the Statement of Grounds and the reply shall contain a party’s complete case. Amendments to a party’s case are only possible under the conditions of Article 13(1) and (3) RPBA. The request to be allowed to present new evidence in further proceedings before the OD would be contrary to Article 13(3) RPBA. Consequently, the Board refused the [patent proprietors’] request for remittal of the case to the OD for further prosecution.

To read the whole decision, please click here.