Case - T 0211/06
In the decision T 0211/06 from the EPO Board of Appeal (BoA), Engineering partner Matt Naylor successfully overturned the refusal of a patent application by the EPO Examining Division (ED). This important decision clarified what can be considered as prior art when assessing inventive step, and in particular whether subject-matter referred to in the background section of a patent application can be relied on as prior art.
Decision of the Examining Division
The invention disclosed in the patent application relates to catalytic converters, which are typically used for purifying exhaust gases from internal combustion engines. The invention provides a method for loading a catalytic material into a cell structure of the catalytic converter, which improves an efficiency with which the catalytic material is used. However, the ED refused the patent application on the grounds of lack of inventive step.
In their reasoning, the ED cited as the “closest prior art” for the invention a process for loading the catalytic material which was described in the background section of the patent application. The ED argued that the fact that this process was disclosed in the background section of the patent application showed that it should be considered as prior art and would have been widely known at the time of filing the patent application. They also highlighted the fact that the background section refers to steps in this process being performed “conventionally”, which they saw as further support for their argument.
In addition, the ED formulated a series of steps which they considered to be common “laboratory practice” at the time of filing. In their view, such common “laboratory practice” could be used as an alternative “closest prior art” for an inventive step attack against the claims.
Based on this, the ED found that the invention lacked inventive step when taking either the process disclosed in the background section of the patent application or common “laboratory practice” as the closest prior art.
Decision of the Board of Appeal
In the appeal we argued that, although the process described in the background section of the patent application served as background for the inventors when developing the invention, the process was not actually publicly known and so did not constitute prior art within the meaning of European patent law. In fact, the process described in the background section was an internal process that was used by the applicant, but which had not been publicly disclosed at the time of filing. As evidence of this, a statement from the inventors was filed with the appeal, explaining that they used this internal process as a starting point for their invention, but that to their knowledge this process was not known outside of the company.
The BoA agreed with this analysis, highlighting that there was no evidence that the process disclosed in the background section of the patent application had been made public before the date of filing. Thus, the board considered that there was a distinction between the “internal state of the art” which was known to the applicant at the time of filing, and prior art within the meaning of European patent law (as set out in Article 54(2) EPC).
Regarding the common “laboratory practice” put forward by the ED, the BoA pointed out that there was no evidence that such practice was in fact known in the field at the time of filing. The Board stated that using such “laboratory practice” as closest prior art for an inventive step attack “would be using a subjective starting point, which cannot be objectively assessed, since it is not based on reliable technical information based on evidence as required by Article 54(2) EPC”.
So, the BoA concluded that the ED’s lack of inventive step objection was incorrect, as it was based on an incorrect assessment of the prior art. In particular, there was no evidence that the background section of the patent application or the “laboratory practice” put forward by the ED were in fact available to the public at the time of filing the application.
The BoA therefore remitted the application to the ED, which subsequently granted the application.
Outlook
This decision shows that, even if subject-matter is labelled as “background” in a patent application, it does not necessarily constitute prior art for the application at the EPO. This will depend on whether the subject-matter was in fact available to the public at the time of filing the application, which should be assessed based on objective evidence. Furthermore, any allegation of common practices or general knowledge in the field should be substantiated by evidence.
This is to be contrasted with other jurisdictions, such as the US, where statements made in the background section of the patent application may be interpreted more strictly as an admission of prior art. Therefore, when drafting a patent application, it is important to consider which jurisdictions it will be filed in, and whether any statements made in the background section could be prejudicial to patentability.
Find the decision here.
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This blog was written by Daniel Brodsky.
Daniel is an Associate and Patent Attorney at Mewburn Ellis. He works in the electronics and engineering fields drafting and prosecuting patent applications before the EPO and UKIPO. He has experience with Freedom to Operate (FTO) searches and analysis. Daniel also played a part in a recent significant successful challenge at the UKIPO where we overcame the Examiner’s objection that an invention was excluded from patentability as a computer program and business method. He has a BSc and PhD in physics from the University of St Andrews in Scotland. Part of his PhD research was carried out at the Max Planck Institute for Chemical Physics of Solids in Dresden, Germany.
