T 306/09 – You Have To Cite Something

Both the patent proprietor and the opponent appealed against the decision of the Opposition Division (OD) to maintain the opposed patent in amended form.

The OD had found claim 1 of the main request to lack inventive step and had justified this conclusion as follows:

The Board did not agree:

[2] According to established jurisprudence of the boards of appeal, to satisfy the requirement of R 111(2), a decision should contain, in logical sequence, those arguments which support it. The conclusions drawn by the deciding body from the facts and evidence must be made clear. Therefore, all the facts, evidence and arguments which are essential to the decision must be discussed in detail in the decision including all the decisive considerations in respect of the factual and legal aspects of the case. The purpose of the requirement to reason the decision is to enable the parties and, in case of an appeal, also the board of appeal to examine whether the decision could be considered to be justified or not (see T 278/00; T 1366/05).

[3] In the present case, the OD decided that the subject-matter of claims 1 and 16 of the main request did not involve an inventive step, with the consequence that this request was rejected.

[4] 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 decision under appeal to justify the conclusion under A 56 has to contain a proper assessment of the question of obviousness in the light of the prior art.

However, point 3.2 of the decision under appeal, which is the portion of said decision which may reveal the reasoning of the OD on the issue of inventive step, does not contain any reference to any prior art; said paragraph only states that the claimed subject-matter did not comply with the requirements of A 56 since the subject-matter claimed “encompasses embodiments which do not solve the problem forming the basis of the patent and which do not achieve the intended effect”.

The OD thus arrived at the conclusion that the claimed subject-matter lacked an inventive step by finding that a purported effect had not been achieved over the whole breadth of the subject-matter claimed, without assessing obviousness in the light of the prior art.

Since the requirement of inventive step as defined in A 56 is based on the state of the art, the decision under appeal, by arriving at its conclusion of lack of inventive step without reference to prior art, is insufficiently reasoned in the sense of R 111(2) (see T 87/08 and T 2375/10).

[5] This failure amounts to a substantial procedural violation requiring that the decision under appeal is set aside and the case is remitted to the first instance (see T 278/00 [5]). The appeals are thus deemed to be allowable and the board considers it to be equitable by reason of the substantial procedural violation to reimburse the appeal fees of both parties pursuant to R 103(1)(a).

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

The file wrapper can be found here.

T 2375/10 was discussed in a previous post (here).