Key points
- The Board, under inventive step: "The problem to be solved proved to be a contentious issue.".
- "The [opponent] appellant argued that the technical problem was to provide an infant formula suitable for newborn infants. For the [patentee] respondent, however, the correct technical problem was the one identified in the decision under appeal [probably: "resided in recognising that bioavailability of lutein from infant formula was low"]. In its view, the patent involved one of the rare cases of a "problem invention". It had not been recognised in the art that bioavailability of lutein from formula milk was lower than that achieved by human milk. Once this was known, the solution would have been obvious."
- The Board: "As the respondent [patentee] acknowledged, "problem inventions" are rare. One reason for this may be that they are somewhat at odds with the problem-solution approach. It is generally accepted that the formulation of the technical problem should not contain pointers to the solution or partially anticipate the solution. In contrast to this, "problem inventions" tend to do both."
- I'm not entirely certain of what the Board means with the last sentence.
- The Board reviews the foundational decision T 2/83. "T 2/83 concedes that the discovery of an unrecognised problem may in certain circumstances give rise to patentable subject-matter. This may be so even though once the formulation of the problem is accepted, the question of whether the solution was obvious becomes irrelevant. A situation may arise in which, if a subject-matter claimed is assessed as a "problem invention", an attack based on lack of inventive step can be successfully directed only against the recognition of the problem, not against the claimed solution. At the same time, T 2/83 makes it clear that in the context of a clearly desired improvement, side effects which may be interpreted as a solution of a yet unknown problem shall not be decisive for patentability."
- The Board then turns to the facts of the case at hand. I refer the interested reader to the text below the fold. I would be glad to learn from comments to what extent the Board applies a coherent framework.
- "Considering all this, it is not justified to accept the formulation of a "problem invention", as suggested by the respondent. Instead, the technical problem has to be regarded as that of providing a nutritional formula (with lutein) suitable for infants, including newborns."
- The patent is revoked.
EPO
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/2023/05/t-070318-problem-inventions-are-rare.html
