Thursday, 12 July 2012

T 2438/09 – A Case For Prior Art

From time to time the problem-solution approach is challenged for being tantamount to an ex post facto analysis. This argument is not very likely to be endorsed by the Boards, as the present case illustrates once more.

The appeal was filed by the opponent after the Opposition Division (OD) had maintained the patent in amended form.

Claim 1 of the request before the Board read:
1. A method of washing dishware/tableware in an automatic dishwashing machine using a machine dishwashing product in the form of a water-soluble pouch comprising a plurality of compartments in generally superposed or superposable relationship, each containing one or more detergent active or auxiliary components, wherein at least one of the plurality of compartments comprises a liquid composition or a composition in the form of a paste, gel or wax and wherein the pouch has a volume of from 5 to 70 ml and a longitudinal/transverse aspect ratio in the range from 2:1 to 1:8, preferably from 1:1 to 1:4, wherein the product is dispensed from the automatic dishwashing machine dispenser into the main wash cycle.
The assessment of the inventive step involved in this subject-matter led the Board to go back to very basic issues:

[3] The relevant prior art for detergent products in pouch form mentioned in the patent in suit includes document D5 (paragraph 2) which is considered by the [opponent] as a suitable starting point for the assessment of inventive step.

The [patent proprietor], in contrast, submitted that in order to avoid ex post facto analysis, assessment of the claimed invention had to be done without any knowledge of the prior art.

This view does not, however, conform to the problem solution-approach normally applied by the Boards of Appeal for the assessment of inventive step. According to this approach inventiveness is assessed on the basis of a suitable piece of prior art and the effects actually achieved by the claimed invention when compared with that prior art, hence the effects achieved by those features which distinguish the claimed subject-matter from the prior art. These effects constitute the technical problem solved by the claimed invention in view of that prior art and it has to be examined whether it was obvious for a skilled person to solve that technical problem by those distinguishing features (Case Law, 6th edition, 2010, chapter I.D.2.).

[4] Hence, a suitable piece of prior art, if present, has to be considered for the assessment of inventive step.

In the present case, the Board agrees with the [opponent] that such piece of prior art is represented by document D5 since it relates to a similar technical problem as the patent in suit, namely the provision of detergent doses suitable for cleaning dishware in a dishwashing machine which do not present the drawbacks of detergents in powder or tablet form […].

The patent was finally revoked.

Should you wish to download the whole decision, just click here.

The file wrapper can be found here.


MaxDrei said...

I see that this is one of 5 divisionals. Perhaps this explains the patentee's boldness, in telling the Board it would be impermissible hindsight to base an obviousness attack on D5.

I have a theory to explain why Americans disapprove of the Problem and Solution Approach. In their "First to Invent" system, the date on which obviousness falls to be considered is not the filing date but, rather, the date of conception. It follows, that any assembling of prior art references that is benefitting from knowledge of the claimed invention is per se impermissible use of hindsight. No wonder they find EPO-PSA intolerable and intellectually indefensible.

So I wonder how the US courts will handle obviousness after their new "First to File" law comes in, for then the prior art searching and the writing of the patent application are both events that take place BEFORE the date on which a legitimate fair and objective assessment of obviousness is made by comparing the already-written patent application with the already published corpus of knowledge. In ANY First to File jurisdiction, the search, and then the drafting, is done with "hindsight" knowledge of the inventive concept.

So then, in future, will American patent lawyers still tell the EPO it can't consider D5?

oliver said...

Thanks, MaxDrei, for mentioning this interesting cross-cultural aspect. I guess we in Europe might experience similar difficulties if the proposal to introduce a grace period succeeds.

When importing particular features into an existing system of law, you always run the risk of bringing rabbits to Australia.

MaxDrei said...

Rabbits to Australia! What an exquisite comparison.

Grace period? I'm not holding my breath. Is Europe these days capable of reforming anything?