Key points
- Board 3.3.02 on the selection of the closest prior art document: “With regard to the choice of the starting point, there are two different approaches in the case law.”
- “ In a first approach, it is the deciding body which selects the closest prior art (T 1241/18, point 2.1 of the reasons [of Board 3.5.02]; T 1450/16 point 2.1.4 of the reasons; T 855/15 point 8.2 of the reasons). Under this approach, the skilled person and their expectations, prejudices, knowledge and abilities do not play any role in this selection (T 1241/18, Ibid.). The skilled person does not come into play until later on when the closest teaching has been identified [...] If parties have diverging views over the right springboard, the examination of inventive step under this approach should in principle be repeated for each of the technical teachings invoked since the invention has to be inventive over the entirety of the prior art.
- As a comment I personally see the merits of this first approach, but it is of course not the established EPO problem-solution approach.
- “In a second approach, the skilled person comes into play as early as when the closest prior-art disclosure is being selected.” (numerous references to case law omitted).
- “In the board's view, the first approach is not applicable at least in the present case. First of all, in line with the established case law [] it is the board's firm conviction that the skilled person is the relevant point of reference right from the start of any inventive-step assessment. ... at least in the field of chemistry, with which the case in hand is concerned, the skilled person normally does not arbitrarily pick any existing prior-art disclosure and only then starts to think about the technical field in which it might be applied and what effect it could possibly achieve. This approach would be unrealistic and artificial.
- “Unlike the first approach, the second approach is based on a technically meaningful and thus realistic scenario. More specifically, the skilled person is normally confronted with a certain purpose or effect to be achieved in a certain technical field, e.g. as the goal formulated within a research project. With this in mind, the skilled person would then look for a prior-art disclosure that is in the same technical field and aims at the same or a similar purpose or effect. ”
- “ For the above reasons, the board follows the second approach. Hence, a disclosure within a prior-art document can only be considered to represent a suitable starting point for assessing inventive step if the skilled person would have realistically started from it.”
- As a comment, the question then is how to determine the relevant skilled person (technical field etc.).
- As a comment, where the Board writes that: “the skilled person normally does not ... starts to think about the technical field in which [the starting point document] might be applied and what effect it could possibly achieve. This approach would be unrealistic and artificial”, it seems that this could probably also be used as reasoning in the third stage (obviousness) of the PSA. Furthermore, the phrase "normally does not" implies that exceptions are possible depending on the facts of the case.
EPO T 2759/17
The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.
source http://justpatentlaw.blogspot.com/2022/02/t-275917-skilled-person-and-cpa.html
