T 87/08 – Mere Repeating Won’t Do

[6.2] In the present case, the deciding body, here the Opposition Division (OD), decided, against [the patent proprietor] that the claimed subject-matter of the patent as granted did not involve an inventive step and, against [the opponent], that the subject-matter of the auxiliary request then pending involved an inventive step (A 56).

A 56 requires that the assessment of inventive step is made “having regard to the state of the art”. Accordingly, the logical chain of reasoning of the OD in the decision under appeal, to justify the above conclusions under A 56, has to contain a proper assessment of the question of obviousness in the light of the prior art.

[6.3] The only part of the section “Reasons for the Decision” of the written decision under appeal dealing with the issue of inventive step in relation with the main request is to be found in section C, point 3 comprising three paragraphs. Since paragraph 3.2 thereof only repeats the arguments of the proprietor of the patent in suit and does not reflect the OD’s own considerations, this paragraph in fact should rather belong to the section “Facts and Submissions” of the written decision under appeal. The mere summary of a party’s submission is not per se a reasoning proper to the deciding body. Consequently, paragraphs 3.1 and 3.3 are the sole portions of the written decision under appeal which may reveal the reasoning of the OD on the issue of inventive step and, thus, are the sole portions of the decision which could justify the OD’s conclusion of lack of inventive step in relation to the main request. However, there is no reference at all in these paragraphs to any prior art, paragraph 3.1 merely stating that the claimed subject-matter did not comply with the requirements of A 56 since the technical problem had not been solved, i.e. the purported effect not achieved, over its whole scope and paragraph 3.3 being limited to the mere statements that “the technical problem has not been solved over the whole scope claimed” and that the “subject-matter is considered to be too broadly defined”.

Therefore, the OD arrived in the appealed decision at the conclusion that the subject-matter of the main request lacked inventive step merely by stating that a purported effect has not been achieved, i.e. this technical problem had not been solved, without reformulating the problem in a less ambitious way and without assessing obviousness of the claimed solution to that reformulated problem in the light of the cited prior art.

Since, the requirement of inventive step defined in A 56 is based on “the state of the art”, the decision of the OD, by arriving at a conclusion of lack of inventive step without reference to prior art, is insufficiently reasoned in the sense of R 68(2) EPC 1973 (R 111(2) EPC 2000).

Paragraph [6.4] consists in similar observations for the auxiliary request filed by the patent proprietor.

[6.5] Due to these deficiencies in the reasons for refusing the then pending main request and allowing the then pending auxiliary request, the Board and the appellants are left in the dark as to how the first instance came to its conclusions. Hence, the appellants and the Board were not able to examine whether the decision could be considered to be justified or not, the appellants being moreover hindered in deciding whether to file an appeal against the decision and in drafting the grounds for appeal.

This failure amounts to a substantial procedural violation requiring that the decision under appeal to be set aside and the case be remitted to the first instance (see T 278/00).

The appeals of both parties are thus deemed to be allowable and the Board considers it to be equitable by reason of that substantial procedural violation to reimburse the appeal fees of both parties in the present case pursuant to R 67 EPC 1973 (R 103(1)(a) EPC 2000).

To read the whole decision, click here.

NB: This decision is also commented on Laurent Teyssèdre’s blog.