T 25/09 – IP Rights Do Not Frighten The Skilled Person

[13] [The patent proprietor] argued that the skilled person trying to solve the problem […] would not turn to document D1B […]

The skilled person had several reasons not to turn to document D1B. Firstly, the use of the method disclosed therein was the intellectual property of the Patent Proprietor of document D1B. A skilled person, knowing that other purification processes were not protected by patent law, would not have chosen the process of document D1B. […]

[14] With regard to [the patent proprietor’s] argument that the skilled person would not have considered the teaching of document D1B because patent rights to be observed would have prevented him to do so, the Board firstly remarks that it is not aware of any legal basis, neither in the EPC nor in any other national or international law, which could form a basis for the conclusion that the disclosure in a patent should be disregarded for the assessment of inventive step, and secondly is convinced that this view is not supported by the usual and common approach how to consider the state of the art. To intellectually consider a certain teaching in a piece of prior art for the technical solution of a given technical problem is not hampered by the fact that carrying out commercially this teaching might be forbidden by patent rights, which furthermore might not even be valid.

It is also to be noted that the priority date of document D1B is 1981 whereas the priority date of the patent in suit is 2001.

We shall come back on this decision tomorrow.

To read the whole decision, click here.