EP 3 054 066 B1 relates to a fence structure.
Brief outline of the case
The patent was maintained according to AR5 and the opponent appealed.
Claim 1 as maintained lacked IS over D16, figuring on the ESR, in combination with CGK.
As the opponent’s objections against AR1 filed in appeal were late filed and not admitted under Art 13(2) RPBA, the patent was maintained according AR1ap.
The case is interesting as it deals with the notion of incentive to modify the PA and the notion of prejudice.
The OD’s decision relating to an incentive in the PA
The OD considered in the contested decision that the skilled person would not have arrived at the invention starting from D16 since this document did not provide any incentive to adapt or modify the fence disclosed therein to improve its corrosion resistance, in particular since this closest prior art teaches the use of various materials already having good corrosion resistance.
The proprietor agreed with the OD.
Alleged technical prejudice against using Corten steel for the proprietor
The distinguishing feature “Corten steel” in the uprights of D16 was specifically defined for the “tubular metallic sections” constituting the uprights.
Corten steel had never been proposed for this kind of application even though the material itself had been known for several decades. The use of Corten steel required an in-depth study before its suitability for a particular application could be confirmed. D16 discloses uprights comprising several points where water or humidity were likely to accumulate and where problems were to be expected if Corten steel was used.
For the proprietor, it was part of the CGK of the skilled person that the use of Corten steel entailed disadvantages in applications with water accumulation or in salty environments. The CGK was to be found in D32 on the following link: “https://en.wikipedia.org/wiki/Weathering_steel” dated 23.04.2013.
The board’s decision
No necessity for an incentive when applying the PSA
The board reminded that the PSA is based on what the skilled person would do when looking for a solution to the OTP, which is defined on the basis of the technical effect produced by the distinguishing features.
For the board, it is a conceptual error to consider that the CPA must provide an incentive to modify the same in order to justify an absence of IS.
The motivation to modify (if any) can also be – and usually is – found in the secondary teaching consulted by the skilled person when looking for a solution to the OTP.
Indeed, a teaching in the secondary document is usually the pointer which incites the person skilled in the art to apply the prior-art teaching disclosed in the secondary document in order to overcome the OTP.
Such a pointer or incentive is precisely what differentiates the obvious solution from a hindsight-based solution or the “would” from the “could”.
In the present case, the known anti-corrosive properties of the Corten-steel metal provide a motivation or pointer to use the material to improve corrosion resistance. There is thus no hindsight in the analysis, contrary to what has been argued by the proprietor.
In the present case, the board added that the fact that some of the materials in D16 exhibit good anti-corrosion properties is not an indication to the skilled person that they are the only materials to be used for the embodiments disclosed therein. In other words, D16 does not teach away from considering other materials.
Alleged technical prejudice against using Corten steel
D32 discloses that the use of Corten steel in construction presents “several challenges if water is allowed to accumulate in pockets, those areas will experience higher corrosion rates, so provision for drainage must be made, but this statement is made in the context of applications in construction.
For the board, the reservations of the use of Corten steel in the technical field of construction does not result in a generalised technical prejudice against all applications. It is restricted to the existence of reservations regarding the use of Corten steel in this particular field.
This does not mean that it was CGK that any water accumulation or humidity concentration in an element differing from a construction element – e.g. a fence upright, as disclosed in D16 – rendered the application of Corten steel unsuitable for it. The same applies to the case of the disclosed disadvantages linked to a use in “salty environments”, the fence of D16 furthermore not being disclosed as being intended for such environments.
The patent specification does not support the alleged technical prejudice either, since it contains no reference to any problems caused by water accumulation or humidity, let alone to any means of countering these alleged problems.
In the absence of any evidence by the proprietor, and without there even being any mention of alleged technical prejudice in the cited prior art, it is not convincing that the precise contribution of the invention was to be seen in overcoming such technical prejudice.
Comments
No necessity of an inventive to modify the PA at the EPO
The present decision of a board reminds that, when applying the PSA, there is no necessity for the skilled person to find an incentive in order to modify the CPA.
This position appears to differ with the position of the German Federal Court (BGH), for which it needs an incentive to modify the chosen PA.
For the BGH, the idea is that treading a new path to solve a technical problem, is in principle to be regarded as an inventive step if the person skilled in the art did not receive a “hint” that put him on this path, see Deichfuß, GRUR Patent 2024, 94.
This is not necessary at the EPO when the skilled person “would” apply a known teaching to the CPA to solve the OTP. The notion of CPA and OTP as used in the PSA is foreign to the BGH.
Alleged technical prejudice against using Corten steel
The board made clear that an alleged prejudice to use a certain product in a given field does not necessarily applicable in all fields.
It is also to the party prevailing itself from a prejudice to prove the existence of a prejudice.
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