Tuesday, 15 June 2010

T 2271/08 – Time Factor Denied

From time to time decisions of the Boards of appeal refer to the so-called “secondary indicia for inventive step such as the existence of a prejudice, commercial success of the invention, and so on. The present decision deals with a case where the patent proprietor argued that the time factor played in favour of inventiveness, and provided some corresponding evidence.

** Translation from the German **

[2.3.4] According to the case law of the Boards of appeal, a period of 23 years between the date of publication of the document disclosing the closest prior art and the priority date of the impugned patent can be considered to be an indication of inventive step [if the relevant technical field is] a highly active (stark bearbeitet) technical field of economic importance.

In the present case there is no evidence that the claimed subject-matter [an immersion pump] is part of a technical field of economic importance. Even the hardcopy of search results in class F04D 13/14 showing 527 documents for the period since 1900 does not prove that there has been a particularly high activity during the 20 years that separate the publication date of document E1 and the priority date of the present patent.

Moreover, it cannot be excluded that commercial considerations deterred the skilled person from industrially applying the immersion pump according to E1 with corresponding modifications. As a matter of fact, if the users considered the old technology to be satisfying and if this technology left margin for improvement, there was no reason to invest the high amounts needed for industrially applying the new technology.

[2.3.5] Therefore, the subject-matter of claim 1 […] does not involve an inventive step as required by A 56 EPC 1973.

We will come back on this decision tomorrow, if you like.

To read the whole decision, please click here.


Anonymous said...

The so called "secondary indicia" are usually overrated.
If the solution is obvious, no commercial success or long periods of time may help to make it inventive. There are only very few cases in which doubts arise whether the skilled person would have applied the claimed solution and in these rare cases secondary indicia may play a role. However, it has to be shown that they are really linked to the invention (eg commercial success may be due to good selling practice of a product, which is however obvious).

Oliver said...

Yes, I guess I might agree on that.

On the other hand, the "secondary indicia" (or at least some of them) might be considered to be "real life" complements to the somewhat artificial problem-solution approach. Is it obvious to combine two documents? Usually one does not spend much thought on this question. But if nobody has combined the documents over decades, this might be an indication that the combination was not so obvious after all.

Commercial success is certainly the most questionable of the secondary indicia. There are others which appear to be more interesting. For example, the effect of the application on the technical field (e.g. T 292/85). If the publication of the application has triggered a whole bunch of applications, this might indicate that a real invention has been made.