The blind date

I initially thought today’s decision raised an exciting conundrum. But after figuring it out, I must say I feel sort of disappointed. Like someone having heard of the famous curious incident of the dog in the night-time may be underwhelmed to hear that the incident was that there was in fact no incident.

Speaking of dog incidents, the decision is precisely related to serious dog incidents and how to prevent them. Indeed, the invention at stake is in the field of dog collars – the kind that contain chemicals to prevent severe parasitic diseases. The invention is protected by European patent No. EP 1022944 (EP’944), which was initially filed by Hoescht Roussel Vet and later assigned to Akzo Nobel and then Intervet International.

Two companies from the Bayer group jointly filed a nullity suit against Intervet in front of the Paris Tribunal de grande instance (TGI). The patent proprietor counterclaimed for infringement of the patent.

The patent contains three independent Swiss-type claims. The first one is worded as follows:

Use of a pyrethroid in the manufacture of a medicament in the form of a collar for the protection of dogs from bites of phlebotomine sandflies.

The other two are similar except that the use is respectively “for the control of leishmaniasis in dogs“, and “for the control of human visceral leishmaniasis“.

When prophylaxis meets fashion.
If only prophylaxis could sometimes meet fashion.

Bayer argued that the three main claims lacked novelty over an article authored by the inventors themselves. There seems to have been little debate over the fact that, in terms of contents, the article was indeed prejudicial to the novelty of the claims. But the central discussion was rather whether the article belonged to the state of the art in the first place.

The patent claims a priority date of June 18, 1997. The article was published in the issue of Medical and Veterinary Entomology of April 1997But the patent proprietor’s defense was that:

Back in 1997, the publication of this type of document took a certain time and […] contrary to what one could think in view of the journal, it was published for the first time on June 19, 1997, after the priority date of the EP’944 patent. 

Hmm, as far as I can remember, back in 1997 journals were no longer delivered by stagecoaches, but why not. Which evidence did the patentee provide? Two faxes.

The first fax was sent from the editor Blackwell Sciences to one of the inventors on January 6, 1998. The fax indicates that the article dated April 1997 was published for the first time on June 19, 1997. By the way, this is exactly the day after the priority date.

The second fax was sent from the British Library to the original applicant two days later, on January 8, 1998. The fax mentions that the issue of the journal at stake was received by the library on June 25, 1997 and made available to the public on that same date.

The court was not convinced by these messages faxed during the priority year.

The court’s appraisal of the second fax seems to make perfect sense:  the fact that one particular library (however prestigious it may be) received a copy of the journal issue on a certain date does not disprove that other recipients may have received their own copies significantly earlier.

The fate of the first fax is probably more debatable. The court noted that the recipient was one of the inventors, just like the recipient of the other fax was the applicant. These are “persons or companies having a vested interest in the patent […], which weakens the probative value of these documents“.

Now, this is tough! How were the inventors / applicants supposed to proceed in order to determine the exact date of publication of the article other than try to obtain a statement from the editor?

The court also remarked that the context of the faxes is unknown, i.e. Intervet did not explain why these faxes were requested from the editor and the library. I personally do not think that this is critical. What is important is the contents of the faxes. Besides, it can be fairly assumed that the applicant was aware of a possible novelty challenge due to the April 1997 article and thus sought to preserve evidence that the article was not prior art. This does not look particularly suspicious.

Finally and more importantly, the court stated that

This statement was not accompanied by any further evidence confirming the publication delay and was not supplemented by other documents from the edition services. 

So, one isolated piece of evidence was not sufficient for the court in view of the basic and natural presumption that a journal issue dated April 1997 was indeed published during that month.

Now, here comes the conundrum that I mentioned at the beginning of this post. The court noted in passing that

The fact that the examining division of the EPO in the context of the examination of the patent acknowledged the date of June 19, 1997 is not sufficient to convince the court. 

I was curious about this acknowledgment by the examining division, and I therefore looked at the file wrapper of the patent as well as of the priority application (which was also a European application). In both cases, the article is cited in the search report in category X (highly relevant prior art). But then, in subsequent communications from the examining division, it is indeed acknowledged that this document was published on June 19, 1997 and is thus not prior art.

I wondered whether the EPO databases contained additional information on the publication date of the article; and if such additional information existed somewhere, I wondered why the patent proprietor did not make use of the information to strengthen its case.

But upon closer inspection, what actually happened is probably less remarkable. The first document in which the statement by the examiner can be found is the international preliminary examination report (IPER) issued in connection with the PCT application on which EP’944 was based. The exchanges between the applicant and the EPO in its capacity of IPEA (international preliminary examination authority) are not accessible online but it can be assumed that the applicant filed the faxes of January 1998 and made the argument that in view in particular of the first fax, the actual publication date was June 19, 1997. The examiner was likely convinced, which led to the statement in the IPER. This statement was then later repeated in communications from the examining division, not only in the EP’944 examination proceedings, but also in the corresponding examination proceedings in connection with the priority application (which initially puzzled me).

So if my assumption is correct and if the mystery is indeed solved, it simply means that the examining division reached a different conclusion from the French court based on the same evidence – business as usual.

At any rate, the three independent claims were invalidated for lack of novelty in view of the inventor’s article, as well as dependent claims 5 and 6. Dependent claim 4 was found to lack an inventive step over the same disclosure.

The court did not stop there and committed what some professors at the CEIPI patent course like to call overkilling.

Namely, the main claims were also found to lack an inventive step irrespective of the disputed article.

The reasoning in the decision is relatively short in this respect, but it seems that a veterinary thesis published in 1991 was very relevant as it disclosed a plate impregnated with cypermethrin (a pyrethroid) as a means for preventing phlebotomine bites, in the context of leishmaniosis prophylaxis. The only difference between the claimed invention and this disclosure was the impregnation of a dog collar instead of a plate. This was seen by the judges as an obvious development since impregnated dog collars have been known for a long time.

It is also noted in the decision that the German part of EP’944 was revoked by the Bundespatentgericht in April 2015. Furthermore, a parallel lawsuit is pending in front of the Turin court, and the court-appointed expert issued a report in which the patent was considered to lack an inventive step. It seems that the French court has relied on this report to some extent in its own analysis. So, as far as one can tell from the decision, Bayer seems to be sweeping the board across Europe.

But Intervet will certainly get another shot on appeal.

Indeed, it can be seen from the European patent register that a central request for limitation of the patent was filed in July and is currently pending. One main request and two auxiliary requests were filed. Independent claims 2 and 3 were deleted and independent claim 1 was inter alia restricted to a particular compound, deltamethrin.

If the limitation is accepted by the EPO, I guess the court of appeal will have to look at the case starting from scratch…


CASE REFERENCE: Tribunal de grande instance de Paris, 3ème chambre, 4ème section, April 14, 2016, SAS Bayer Healthcare & Bayer Animal Health GmbH v. Intervet International BV, RG No.14/05992.

Take the long way home

Some critics of IP French courts sometimes complain that judges have a tendency to take shortcuts and to always look for the easy way out of a case instead of dealing with all difficult questions. Today’s case may prove them wrong, as the court took the long way home instead of the short one, by combining three pieces of prior art in order to arrive at a finding of lack of inventive step – although two or even one would probably have been sufficient.

Italian company Imball Center Srl sued two subsidiaries from the same group ITM Entreprises (hereafter collectively referred to as ITM) for infringement of the French part of European patent EP 1885622 (EP’622). The patent relates to a thermal bag for food, and ITM was accused of providing infringing bags to French retailer Intermarché.

ITM filed a nullity counterclaim on the grounds of lack of novelty and lack of inventive step.

Claim 1 of the patent reads as follows:

A thermal bag made of thermally insulating composite material folded to form a bottom and welded along lateral borders to form a body of the bag with a mouth at the level of which a handle is applied, said handle having a closing device for said mouth, said composite material defining a bottom folded in an accordion-like fashion opposite the mouth of the bag, and said handle having a shorter length than the length of said mouth when the bag is in the flattened position; characterized in that a laminar stiffening element of the accordion-like bottom is disposed inside the bag. 

The lack of novelty argument was based on four thermal bags on sale before the priority date of the patent, respectively called the Intermarché orange bag, the Intermarché red bag, the Carrefour bag and the Thiriet bag.

The court accepted that all bags were prior art, relying on a variety of evidence: catalogues, affidavits, orders, etc. Interestingly, indirect evidence was also relied on in order to prove the date of some bags, such as the presence of an old logo on a bag, or the presence of a phone number in a format no longer in use for years.

However, the court held that the thermal bags in question did not have a bottom folded in an accordion-like fashion, as required by the main claim of the patent. Since the judgment is relatively concise on this aspect, it is not entirely clear whether the prior art bags clearly had a different type of bottom, or whether there was simply not enough evidence that the prior art bags had a bottom as claimed. Anyway, as already explained in a previous post, providing a perfect demonstration in the context of a public prior use is often extremely challenging.

Concerning inventive step – which turned out to be the patent’s killer – the court first noted that the parties agreed on the fact that a so-called Link patent was the closest prior art.

The claimed invention seems to differ from the Link patent due to (i) the bottom folded in an accordion-like fashion, as well as (ii) the presence of the laminar stiffening element.

The court then turned to another reference, called the Moravek patent, which disclosed distinguishing feature (ii), i.e. the laminar stiffening element. The court used a problem and solution-type of reasoning as regards the combination of Link and Moravek:

[…] Although the invention of the Moravek patent differs from the one proposed by the EP’622 patent in that it does not disclose an insulated bag made of a thermally insulating composite material and does not disclose a bottom folded in an accordion-like fashion […], the skilled person, confronted with the technical difficulty of improving the convenience of the insulated bag, would be enticed to refer to the Moravek patent, the objective of which is precisely to allow the support of the bag’s opening during the introduction of produce into the bag on a sales counter, with a strengthening panel mounted on a pivot which is lowered when the bag is opened owing to air pressure. 

OK, and what about the accordion-like bottom? Well the court said the skilled person would turn to the bags on sale before the priority date, and it particular to the Intermarché red bag. But wait a minute, didn’t the court previously state that these bags did not disclose the accordion-like folded bottom? Yes indeed, but at this point the court added that the Intermarché red bag had a folded bottom which was strictly equivalent to an accordion-like one:

[…] It is a fact that the Intermarché red bag comprises folds at the bottom, in order to form this bottom, although the configuration of the folds is not strictly identical to that provided in EP’622. However, although this difference results in the novelty of the invention as stated above, it is not sufficient in itself to characterize an inventive step for the skilled person whereas the purpose of the feature is identical and it provides the same effects. 

[…] It should be noted that the red Intermarché bag, as it is designed, can perfectly be folded into an accordion shape, so that this feature, although it is the result of an additional manual operation as set out by Imball, is reproduced by the bag. Therefore, the skilled person reading the prior art, with common general knowledge, was able to achieve this result without any inventive step by simply looking at and handling products on the market. 

I started this post by saying that the court had taken the long way rather than the short one. Actually, it seems to me that it would have been much easier to start from the Intermarché red bag as the closest prior art, and to simply state that the sole distinguishing feature of the claimed invention was the shape of the folds at the bottom of the bag, which was obvious to achieve for the skilled person using his or her basic skills and common general knowledge. The way I understand the case, Link and Moravek were not necessary for the reasoning.

As a reminder, French courts are strictly bound by the submissions of the parties, and may not really come up with a reasoning of their own. In this case, it seems that the Link patent was considered as the closest prior art by both parties. So it may well be the defendant who actually took the long way – maybe out of fear of contradicting their novelty challenge, but I am just speculating.

The shortest way?
The shortest way?

Now, two other notable points in this judgment.

First, the court also revoked a number of dependent claims, also for lack of inventive step. For most of those, it seems that the Intermarché prior use already disclosed the claimed features – although the court also referred to further prior art references such as a Martineau patent or a Pakzad patent, in a superfluous manner.

Second, although the patent infringement claim obviously failed due to the revocation of the patent, the court did however find the defendant guilty of unfair competition and awarded 500,000 euros of damages to Imball.

The facts were the following: until February 2012, Imball supplied insulated bags according to the EP’622 patent to ITM. Then ITM stopped the business relationship with Imball and started buying bags from a Malaysian company, L&A Packaging. The Malaysian bags marketed in France by ITM were very similar to Imball’s own patented bags. The court also noted that ITM had the complete specifications of Imball’s bags in its hands and had even asked Imball for samples a few months before the end of the supply relationship, for evaluation and testing purposes – which, in retrospect, may look a little bit like a smoking gun.

The court held:

Therefore the defendant had all the information on the characteristics of the bags made by Imball, and decided, simultaneously with the end of the business relationship with Imball, to get supplies from L&A Packaging so as to market bags at a lower cost. They were aware that said bags were a quasi-literal reproduction of the bags produced by Imball. The manufacturer was necessarily able to benefit from Imball’s know how. This characterizes a disloyal attitude, because it led to knowlingly put a large quantity of quasi-identical products on the market resulting in an obvious confusion with Imball’s products. 

In this respect, the mere fact that the bags sold by the defendants have an Intermarché logo is not enough to avoid the risk of confusion. The risk of confusion must be assessed, on the one hand, from the perspective of the public at stake, i.e. in this case professionals in the field, such as those purchasing bags to market them in their distribution network, and not consumers; and on the other hand in view of the technical similarity of the products, which is established in this case, independently of the logo with which they are effectively marketed. 

Most patent infringement complaints comprise an ancillary unfair competition claim. The latter very often fails if the main infringement claim is successful, as the facts underlying both claims are generally similar, whereas case law demands different facts. Nevertheless, an unfair competition claim can be a valuable fallback claim if the infringement claim fails, and if some actual copying has taken place.

Interestingly, in today’s case the evidence for the acts of unfair competition was obtained during a patent infringement seizure. I am always somewhat surprised that this procedure, which is supposed to be exceptional and therefore strictly limited by its purpose (the demonstration of an alleged patent infringement), can be later used to support a different claim.


CASE REFERENCE: Tribunal de grande instance de Paris, 3ème chambre, 2ème section, March 11, 2016, Imball Center v. Consommables Et Matériels & ITM Alimentaire International, RG No. 13/12818.

Invalidity swept under the rug

Self-represented applicants, who draft and prosecute their patent applications on their own without an extensive knowledge of patent law have a good chance of getting a French national patent granted – this is in fact not an extremely difficult task. But they also run a very high risk of getting an invalid patent granted.

One of my previous posts was dedicated to the revocation of what looked like one such patent, and today’s post is dedicated to the revocation of another one of those.

French patent No. FR 2933591 contains four claims, the first one of which reads as follows:

1. A set for praying comprising a rug, characterized in that it comprises weights at its four ends. They are made of metal or lead and are in the form of beads, or round or angular parts. The set is folded and put in a pouch. 

The three dependent claims are drafted in a similarly non-conventional manner:

2. A rug according to claim 1 characterized in that it is made of a waterproof material covered on the lower side with a silver or gold coating [I am not sure about the meaning of the French term used here] on its back. 

3. A rug according to claim 1 characterized in that it is made [sic] of a drawing indicating the direction of the prayer. 

4. A pouch according to claim 1 characterized in that it comprises adjusting seams in order to keep the rug folded. 

Globacom SARL is a company which markets Islamic products online, including prayer rugs. Globacom was sued for infringement of the above patent by the patent owner, Salmane SAS, as well as the inventor – who was the original applicant.

Globacom counterclaimed for revocation of the patent.

Their first argument was lack of novelty over an alleged public prior use of the invention. The court dismissed this argument which was insufficiently substantiated. Reference was made to a number of websites, but the contents of these websites were not submitted to the court, and the only examples actually filed did not clearly predate the filing date. Globacom also relied on prayer rugs advertised in catalogues, but these catalogues did not contain any precise description of the rugs. Lastly, Globacom mentioned the inventor’s own press releases. But the court could not identify any evidence of a disclosure before the filing date. There was a relevant publication in the issue of September 2008 of a magazine, but this was precisely the month in which the patent was filed, and the exact day on which the magazine was published was not known.

Then the defendant raised an argument of lack of inventive step, which was successful.

Unfortunately, the court did not cite in its decision specific prior art for all the claimed features. I can only assume that such specific prior art was indeed identified in the defendant’s submissions – to which the court referred to in the judgment.

The court held that

The folding, the waterproof material, the silver or gold coating and the presence of weights in order to keep the rug on the floor are indeed known functional parts. 

Besides, the folding and the drawing indicating the direction of Mecca are features introduced before the patent, as evidenced by catalogues of the Chinese company Huitai Carpet showing that as from 2005 a foldable prayer rug kept in a pouch was marketed notably under reference BT317 or BT301. 

Finally, when reading the patent it does not appear that the inventor brought any solution to a technical problem, except for transporting the rug so as to use it in any circumstance or place, which was already solved in the prior art by folding the rug and keeping it in a sleeve. 

Therefore the patent is a mere addition of juxtaposed functional means without any distinct result, so that the patent must be revoked for lack of inventive step. 

This is quite a change from the usual hyper-technical pharma or telecom cases.

The reference by the court to “juxtaposed functional means” is reminiscent of old, traditional French case law, which made a distinction between mere juxtapositions of features and combinations of features bringing a new technical effect (synergistic features if you will).

A more modern approach rather uses a reasoning akin to the EPO problem and solution approach. But this case was probably so simple that a problem and solution approach was not really necessary.

Besides, the patent itself does not contain any indication of a problem to be solved. The description is less than one page long and basically contains a copy-and-paste of the claims plus a couple of additional sentences.

So, what would have happened if the applicant had hired a professional to draft the patent application? Was there no possible patentable invention at all in this product? Could a better drafting have changed the situation? Difficult to say. Expert patent drafting is a necessary and insufficient condition for a valid patent.

As a last word on the case, Salmane SAS further argued infringement of a community design, which was also revoked by the court for lack of novelty. A copyright claim also failed as the originality of the work was not clearly defined by the plaintiff. And so did a passing-off claim.

This praying robot may be more of an invention than the foldable rug in suit.
This demo praying robot may a more sophisticated invention than the foldable rug in suit.

Some readers may wonder how on earth the foldable rug patent got to be granted by the French patent office in the first place. The answer is that the patent office is not supposed to perform an extensive screening process. It issues a search report and a written opinion, and then it is up to the applicant to decide what to do.

This does not necessarily do self-represented applicants a favor.

But for those who are fully aware of the specificity of French patent prosecution, going the national route can be really advantageous.

In fact, while everyone’s attention right now is focused on European patents with or without unitary effect, it should not be forgotten that national patents remain a valuable option.

Here is why, in my view:

  1. French patents are much easier to obtain than European patents. Applicants often have to deal with minor objections of e.g. lack of clarity. But as far as prior art objections are concerned, an application cannot be refused for lack of inventive step. It can only be refused in case there is lack of novelty, and actually only if the lack of novelty is “blatant” (i.e. there is no room for discussion).
  2. Accordingly, prosecution is much cheaper than for a European patent (even when taking into account the need for foreign applicants to provide a French translation).
  3. The lighter examination process also makes it possible for applicants to avoid making statements which could possibly constitute a form of estoppel.
  4. A search report and a written opinion (for information purposes only) either similar or exactly identical to those issued by the EPO are provided at a much lower cost.
  5. There is no pre-grant or post-grant opposition.
  6. After grant, the patent proprietor can file a limitation of the patent at any time. It is thus a possible strategy for a proprietor to get a patent granted in a form which they know is probably too broad, and then limit the patent at a later stage if and when enforcement of the patent is contemplated (or even after the patent has been asserted and subjected to an invalidity challenge).

For the sake of completeness, after this subjective list of pros, here is an equally subjective list of cons (leaving aside the scope of geographical coverage, which is an obvious point):

  1. Applicants have to take their full responsibilities when drafting and prosecuting a French patent application. They should not count on the patent office to make them amend the claims and they should not consider a patent grant as an indication that they have obtained the right scope of protection – as the case discussed above clearly shows.
  2. In terms of valuation, French patents may be perceived as weaker and thus less valuable than European patents. However, this approach is debatable; as explained above, to some extent French patents are stronger because they cannot be opposed, and they can be limited at any time if their initial scope of protection is too broad.
  3. It is not possible to enter French national phase via a PCT. Therefore, a French patent application needs to be filed either as a first filing or as a direct filing within one year from another, original filing. This is a huge handicap which puts our national patent market at a disadvantage with respect to other European countries such as Germany, where national phase entries are allowed. But that is the way it is.

In summary, I do not believe that French national patents should be considered as useless remains of the pre-EPC, pre-UPC world. Together with Unitary patents, opted-out European patents and non opted-out European patents, national patents are yet another valuable option in an ever more complex IP landscape, which requires flexible strategies… Provided that great care is brought to the drafting.


CASE REFERENCE: Tribunal de grande instance de Paris, 3ème chambre 3ème section, March 25, 2016, Salmane SA v. Globacom SARL, RG No. 13/06836.

Wooly invalid patent

So, this is probably not a very good pun to start a new year with; but you have to admit that there are no easy puns with mineral wool, which was the subject-matter of today’s patent – a patent which was found to lack inventive step by Board of appeal 3.3.05.

The problem and solution approach is a must for any inventive step reasoning at the EPO. The first step of this approach consists in determining the closest prior art.

However, practically speaking, it is also very useful to run the approach backwards: if, as the patentee, you realize that, starting from prior art document A, it is much easier to arrive at a conclusion of non-obviousness than starting from prior art document B, then you know you need to push for the selection of A as the closest prior art, and thus come up with arguments disqualifying B. Of course, the opposite is true if you are an opponent.

One strategy sometimes used by patentees to get around a prior art reference which would make their lives miserable if selected as the closest prior art is to explain that this prior art reference is not a realistic starting point for the skilled person.

A typical example of a document which would not be a realistic starting point is one which has a lot of features in common with the claimed invention, but in a different context. As stated e.g. in T 870/96, the closest prior art should be a document

which [the] skilled person would have realistically taken under the “circumstances” of the claimed invention insofar as these circumstances can be retrieved in one item of the prior art. Consequently, among these “circumstances”, aspects as the designation of the subject matter of the invention, the formulation of the original problem and the intended use and the effects to be obtained should generally be given more weight than the maximum number of identical technical features (reasons, 4.1).

Now, in today’s decision T 2579/11, inventive step of the opposed patent had to be assessed in view in particular of two relatively similar prior art references, documents A5 and A6. These prior art references were in fact similar for a good reason: A5 was the priority document of patent application A6.

The patentee argued that the closest prior art was A6 and not the priority document A5. It is straightforward to guess why the patentee made such a submission: the claimed invention related to a mineral wool comprising a number of compounds within specific concentration ranges or concentration ratios. Both A5 and A6 disclosed mineral wools containing the same compounds as the claimed invention. But the examples disclosed in A6 differed from those of A5. In examples 2 and 5 of A5, only the concentration ratio MgO/CaO was outside of the claimed range. In contrast, in some of the examples of A6, not only was the MgO/CaO ratio outside of the claimed range, but in addition the alumine content was above the claimed maximum threshold. Or, in other examples, the alumine content was within the claimed range but then the MgO/CaO ratio was further away from the claimed values than in examples 2 and 5 of A5.

As a result, it was easier to arrive at a finding of lack of inventive step starting from A5 than starting from A6, since fewer modifications needed to be made starting from A5.

Artificial sheep from which mineral wool can be sheared
Artificial sheep from which mineral wool can be sheared

In order to try to disqualify A5 as the closest prior art, the patentee offered the following argumentation:

A5 is accessible only in the examination file wrapper of A6. The skilled person has no reason to start from priority document A5 since he/she has a more elaborate text available, which was filed after one year of additional research. The fact that examples 2 and 5 of A5 were not included in A6 shows that they were not valid examples. Therefore, document A6 is the closest prior art (facts and submissions, VII).

But this did not fly with the Board. The Board first of all noted that both A5 and A6 had the same purpose (which was also the purpose of the claimed invention), namely providing mineral wool which can be dissolved in a physiological medium, and which can be fibered by centrifugation (reasons, 2.2.5). Second of all, in terms of features in common with the claimed invention, it was concluded that, for the reasons already set forth above, “the wools according to examples 2 and 5 of A5 request fewer structural modifications than the wools of A6” (reasons, 2.2.6).

Finally, the Board addressed the patent proprietor’s argumentation as follows:

Once a priority document has been made accessible to the public, it belongs to the state of the art under article 54(1)(2) EPC like any other publicly available document. The papers of a patent application on the one hand and a priority document on the other hand are then entirely distinct documents, even if the latter is made accessible to the public through the publication of this application. The fact that a later application generally has a more detailed description than the priority application can therefore not, by itself, justify that the priority document should be discarded in favor of the later application when the closest prior art is selected. The fact that an embodiment and/or an example contained in the priority application are not included in the application claiming the priority does not by itself allow one to conclude that such embodiment and/or example were less preferred, or less valid. 

[…] Even assuming that the later application A6 contains results of complementary research, nothing indicates that examples 2 and 5 of A5 which are not included in A6 would be invalid or of poor quality or insufficiently disclosed (reasons, 2.2.7).

Thus, examples 2 and 5 of A5 were deemed to represent the closest prior art, and the rest of the problem and solution approach analysis led the Board to the revocation of the patent due to lack of inventive step.

To some extent, it seems to me that a parallel could be made with other cases such as T 741/91 or  T 334/92, where an old prior art document was rejected as a candidate closest prior art because said document had been ignored in the relevant field and had not given rise to further development.

Here, the priority document A5 was dated at most one year prior to the subsequent application A6, so this was not a very”old” document by any means. But the common trait is that, in both situations, an argument was made that a prior art reference should be disregarded as the closest prior art, not because of its intrinsic contents, but rather because of extrinsic evidence that the reference would not count in the eyes of the skilled person. In T 2579/11 the argument failed, whereas it succeeded in T 741/91 or T 334/92. This may just be a matter of the extrinsic evidence being persuasive enough or not.

As a side remark on a procedural aspect of the present decision, the Board skipped the novelty objections and only took position on inventive step as this was sufficient to reach the conclusion that the patent should be revoked. Similarly, the Board focused on inventive step of the most restricted claims defended by the patent proprietor, namely auxiliary request No.3, the conclusion on this request also applying to the previous, broader requests.

This is a reminder that Boards of appeal have a lot of leeway for dealing with submissions of the parties in the order that they see fit, and for getting to the final decision in the most efficient manner. However, shortcuts such as the present one may seem somewhat unorthodox. In particular, there was an objection of lack of novelty of the main request and the first auxiliary request over A5 (as well as over another document A3). This means that the Board decided that these requests involved no inventive step over A5 without ruling whether the claims at stake were even novel over A5.


CASE REFERENCE: Board of Appeal 3.3.05, T 2579/11, Laine minérale / Saint-Gobain, March 10, 2015