CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 2324/18 – Choice of the closest prior art

chat_bubble 21 comments access_time 5 minutes

The patent relates generally to gas turbine engines, and, more specifically, to turbine blade cooling.

Brief outline of the case

The ISR established by the EPO mentions 2 Y and 3 A documents.

The opponent appealed the OD’s decision to reject the opposition.

The board decided that the closest prior art was D1=EP 1 361 337 (1st Y in ISR).

The board held that claim 1 as granted was lacking IS over D1+ D2=JP 58 170 801 (2d Y in ISR). There was no synergistic effect between the features of the claim which differed from the CPA, and hence partial problems applied.

The original AR 1-7 were not admissible for lack of substantiation under Art 12(2+4) RPBA07. A new AR4 was not admissible under Art 13(2) RPBA20.

The board thus decided revocation of the patent.

The case is interesting in view of the proprietor’s argumentation about the choice of the closest prior art.

The choice of the CPA

The proprietor’s position

The proprietor argued during OP that due to the complexity and the efforts invested during the design of the cooling structure of a turbine blade, the invention should be judged from the point or prior art from which the patent started, instead of starting from the state of the art disclosed in D1.

The board’s position

There may indeed be different possible starting points from which the problem-solution approach may be conducted.

If the skilled person has a choice of several workable routes, i.e. routes starting from different documents, which might lead to the invention, the rationale of the problem-solution approach requires that the invention be assessed relative to all these possible routes, before an inventive step can be acknowledged.

Conversely this means that if the invention is obvious to the skilled person in respect of at least one of these routes, then an inventive step is lacking. The board referred to T 21/08, Reasons 1.2.3, and T 967/97, Catchword I.

Consequently, although it might be possible to assess inventive step also from the prior art mentioned in the patent, this would not alone be sufficient to conclude that the claimed invention meets the requirement of Art 56, if there is further prior art, like D1, from which the skilled person may start.

Absent any technical reason that could disqualify D1 as a starting point, the board rejected the proprietor’s argument.


In order to assess IS, it would certainly be the desire of all applicants to take as closest prior art the one he has started from when making its invention and drafting the application.

When assessing IS (and N), the person skilled in the art has at its disposal all what has been made available to the public before the effective date of the claim at stake anywhere over the world.

This is certainly a fiction, but this fiction has been in place since the beginning of the EPC/EPO. The proprietor’s argumentation would thus necessarily fail to convince.

In the present case, the board even noted that the CPA=D1 belongs to the proprietor.

Some inventions might cost a lot to develop, other might cost peanuts. IS has nothing to do with the money spent or the difficulty to arrive at the solution of the problem the applicant wanted to resolve. This might sound hard, but there is no other way to look at all inventions in a non-biased way.  

I would like to quote here Me Mathely, a late French lawyer very active at its time in patent litigation and author of many books on IP:

“Assessing non-obviousness does not imply any judgement of value, be it about the creative effort of the inventor, or be it about the importance or the usefulness of the invention.

The judge cannot simply assert obviousness by merely saying what he is convinced of.

He must formulate the technical reasons which, by comparison of the invention with the prior art, lead to an objective finding of obviousness”.

This way of assessing IS was disclosed way before the problem-solution approach was introduced at the EPO.

One should also not forget that some applicants do not even quote any prior art or even claim that the prior art is “internal”.

The procedure

When looking at the whole procedure, the conclusion to be reached was that the patent should never have been granted as the relevant documents were quoted in the ISR established by the EPO.

The ESO even mentioned the lack of synergy between the features differentiating the subject-matter of claim 1 as filed and D1. The amendment of the claims as filed consisted mainly of the combination of claims 1-3 as filed. IS has never been questioned after the filing of the new claims.

The number of decisions set aside by a board is increasing dramatically and is for 2023 well over 50%.

Those comments should not be taken a criticism towards the ED or OD. The divisions of first instance have actually to cope with an increasing production pressure.

Addendum on the choice of the CPA

I would like to bring the discussion to another topic, i.e. the so-called “internal” prior art.

Starting with T 22/83, there is a number of decisions considering that prior art acknowledged in the description ought to have been publicly available in order for it to be taken into account for the assessment of inventive step.

This is the case when the prior art has to be considered as „internal prior art“.

The applicant/proprietor is then allowed to amend the introductory part of the description in order to rectify an erroneous presentation of prior art by the applicant. See also G-IV, 7.3 (viii).

In T 22/83, the deletion of original Figure 4, coupled with amendments to the introductory part of the description serve to remove an objection to inaccuracy in representation of the state of the art are allowable amendments since they do not contravene Art 123(2).

Among the decisions following T 22/83 it is possible to quote T 2450/17, Reasons, Points 3.3.3 and 3.3.4., T 1123/09, Reasons, Point 7, last but one paragraph, T 889/93, Reasons, Point 2, 1st paragraph and T 524/90, Reasons, Point 2.1.

This line of case law has been challenged in T 1227/10. In line with T 22/83, the OD has decided that the deletion during examination of the original figure 1 and of the part of the description relating to this drawing, both of them indicating the illustrated embodiment as being part of the prior art removed an erroneous statement of the prior art in the original application.

These parts of the original application had to be ignored in assessing the invention disclosed in the original application and their deletion would not contravene Art 123(2).

In opposition appeal proceedings, the board held that the deletion of original figure 1 labelled as prior art and of the corresponding part of the description in the original application has modified the application in a way that the granted claim 1 includes subject-matter which was excluded from the originally filed invention as it would have been understood by a skilled person on reading the whole original application on the date of filing.            

In other words, one could consider that what the applicant declared being part of the prior art is a kind of disclaimer. Removing this disclaimer does amount to an extension of object not allowable under Art 123(2). It is thus irrelevant whether the prior art was “internal” or not.

My question is thus whether the prior art acknowledged in the application as being known, even if it is allegedly “internal” prior art, can be taken as CPA. I would answer by the affirmative.

What do you think?

Share this post


21 replies on “T 2324/18 – Choice of the closest prior art”

francis hagelsays:

If according to the Board the rationale of the problem-solution approach requires that the invention be assessed relative to all possible routes which might lead to the invention, it is my view that this goes against the spirit of the PSA – avoid hindsight bias in the assessment of inventive step – since it clearly requires hindsight bias to identify all these possible routes leading to the invention.

In addition, the consideration of several starting points and closest prior art documents is not consistent with the notion of the closest prior art. “Closest” is a superlative, there can only be one closest prior art, and its choice must be based on objective elements. An opponent should not be allowed to submit “alternative closest prior art”. Note that as the “objective problem” is based on the closest prior art, it is bound to be replaced by an “alternative objective problem” matched to the alternative closest prior art.

Overall I think this undermines the credibility of the PSA, entails inefficiency by burdening the process and much higher attorney fees for the patent owner, a predicament esp. for SMEs.

The ability of an opponent to submit multiple challenges to inventive step may be seen as replicating the ability of an applicant or patent owner to submit multiple auxiliary requests, entrenched in the EPO practice. In other words, a tit-for-tat justified by fairness. But there is a price to be paid.

Avatar photoDaniel X. Thomassays:

Dear Mr Hagel,

I can subscribe to a certain extent to what you say,and there are a number of decisions of the boards which have dealt with the choice of the CPA.

In this respect, I would like to refer to T 2759/17 and especially to Reasons, Points 5.3.1 and 5.3.2.

In a first approach, Reasons Point 5.3.1, it is the deciding body which selects the closest prior art (T 1241/18, point 2.1 of the reasons; 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 and the problem formulated.

In a second approach, Reasons Point 5.3.2, the skilled person comes into play as early as when the closest prior-art disclosure is being selected. The technical teaching from which the skilled person would have realistically started as the most promising springboard towards the invention therefore needs to be determined (see e.g. T 254/86, point 15 of the reasons; T 2148/14, point 2.2.1 of the reasons). Under this approach, the skilled person is held to generally look for a disclosure that aims at a purpose or effect that is the same as or at least similar to the one underlying the patent in question (see e.g. T 710/97, point 3.2.1 of the reasons). Following this approach, it is possible to reject an inventive-step attack on the ground that the skilled person would have not realistically selected the specific disclosure on which the attack in hand relies as a starting point (see T 1307/12 point 3.1.3 of the reasons; T 2114/16, point 5.3.4 of the reasons).

In Reasons Point 5.4, the board added that, selecting the disclosure that is structurally closest to the claimed invention would presuppose knowledge of this invention, e.g. in terms of the structure of a claimed compound (see again T 1307/12, point 3.1.3 of the reasons; T 2114/16, point 5.3.4 of the reasons).

In Reasons Point 5.5, the board added 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. This, in the board’s view, is what is meant by the “most promising springboard” as well-established by case law.

While the same or similar purpose or effect is not necessarily the only consideration the skilled person would make, other considerations, such as the greatest possible structural similarity between the composition described within the closest prior art and that defined in the relevant claim, are of less importance (Case Law of the Boards of Appeal of the European Patent Office, ninth edition, 2019, I.D.3.3). Applying this second approach thus avoids the above-discussed drawback of using hindsight when selecting the starting point for assessing inventive step.

The second approach appears preferable, but one cannot ignore the first one.

There are however cases in which more than one document can be considered as CPA. One example is given in T 591/04.

I would however agree with you that, in principle, the notion of CPA is not compatible with a multiplicity of starting points. I might be annoying when an opponent comes up with a plurality of documents as CPA, but there is no way to avoid it, even if such an approach might induce more costs as a multiplicity of attacks have to be fenced off.

francis hagelsays:

Dear Mr Thomas,

Thank you for your comments.

The second approach you mention is consistent with the very principle of the PSA. The PSA being focused on problem-solving, it makes sense to elect a closest prior art aimed at the same purpose or effect as the claimed invention.

I note your view that the skilled person comes into play as early as when the closest prior art disclosure is being selected. I would even go further : the skilled person should come into play before the selection of the closest prior art. The closest prior art, assuming it shares purpose or effect with the invention, belongs to the field in which the problem is to be solved arises. This field can be equated or at least linked to the « art » of the skilled person. This raises the question, in my view a preliminary to the selection of the closest prior art, of defining the « art » of the skilled person.

This would all the more justified as Art 56 EPC as well as other provisions explicitly refers to the person skilled in the art, and the scope of the « common general knowledge » of the skilled person is frequently a determinative issue.

On this topic, let me quote the French « cour de cassation » : « L’homme du métier est celui du domaine où se pose le problème technique que résout l’invention » (Cass. Comm. 11-18440 20 Nov 2012) : « The person skilled in the art is the person of the field in which the technical problem solved by the invention arises. »

Avatar photoDaniel X. Thomassays:

Dear Mr Hagel,

There is not much to be added to what you say.

The statement of the French Cour de Cassation is expressed in a similar way in T 32/81, OJ 1982,228:

If the problem prompts the person skilled in the art to seek its solution in another technical field the specialist in that field is the person qualified to solve the problem. The assessment of whether the solution involves an inventive step must therefore be based on that specialist’s knowledge and ability.

In Reasons, Point 1.4 and 1.4, of T 1462/14, the board gave a different definition of the skilled person. In T 1462/14, the board held that: ”the skilled person is a notional entity that has been elaborated by the jurisprudence of the boards of appeal in order to serve as an objective reference when deciding on various issues under the EPC. The jurisprudence makes it clear that this notional person cannot be equated with any real person in the technical field of the invention.

Neither an inventor, nor an opponent, nor an examiner, nor a member of a board of appeal, can be equated with the skilled person. This also applies to a representative, independently of any qualification.”

I would thus say that the person skilled in the art is a notional entity which operates in the technical field of the invention.

When teaching about IS as seen at the EPO, I always add that in spite of my long experience at the office, I never personally met a person skilled in the art.

For instance, when dealing with a pacemaker, the notional person skilled in the art is multiple. It should be a doctor (without any effect on the heart the pacemaker is useless), a chemist (there are electrodes, interface of those with tissues, as well as insulation of the electrodes), an electronic engineer (a pacemaker is a programmable electronic device delivering pulses) a control engineer (nowadays pacemaker adapt to the load experienced by body of the wearer) as well as a mechanical engineer (to be implantable the pacemaker needs a casing).

When dealing with a headlight for a car, we need optical constraints to be respected. If the headlight is manufactured by plastic injection, we need as well knowledge in plastic manufacturing technology. There could also possibly be the need for a chemist, as not all plastic materials are suitable for injection.

The notional person skilled in the art has thus the general knowledge common to all those various separate skilled persons.

What do you think?

francis hagelsays:

Dear Mr Thomas,

I am pleased that we generally concur on the issue. Thank you for inviting my opinion.

Thank you for your views and the quotation from T 1462/14. I think the Board’s statement that the skilled person cannot be equated with any real person is unnecessary. The skilled person is mentioned in the EPC Certainly, no real person possesses all the legal attributes of the skilled person, esp. regarding access to all the prior art, but as to the common general knowledge, I think it would be desirable to delineate them as close as possible to what real persons actually possess, for the sake of predictability. And I may add that in the course of my career in various companies, I have met R&D people who were not so far from qualifying as a skilled person in their field.

The definition of the skilled person is a key aspect in the application of the EPC as well as all patent laws. But I note that its use under Art 83 or Art 54 for the assessment of a disclosure is not quite the same as under Art 56. For Art 83, the focus is on specific technical information allegedly lacking in the description, so that the question is the delineation of the common general knowledge of the skilled person. For Art 54, the assessment of a prior art disclosure as to content and enabling character also relies on the common general knowledge of the relevant skilled person. For Art 56, the definition of the skilled person is key in respect of their « art » in connection with the choice of the closest prior art and also in respect of the possible combination of common general knowledge with a document and of the assessment of a disclosure as under Art 54.

It is true that as you point out, in many cases, the skilled person has to include different specialists. This is clear in particular in CII and AI cases. But the leading « art « should be the field which shares context with the claimed invention. To give you a couple of examples, assume the invention relates to a component used in many different fields such as a capacitor or a sensor responsive to a certain physical entity. Depending on the intended field of use, even if the purpose sounds similar, the field of use determines a host of constraints (size, environment specifications, cost, lifetime, maintenance, regulatory,..) which are entirely different and only a specialist of the field is aware of. The particular set of constraints implies that many design options are squarely out of consideration or sub-optimal. Compare for example use in cars, high voltage distribution networks, aerospace, oil wells. The closest prior art should belong to the intended field of use provided it is a claimed feature.

If some of the claims have been drafted in this way but others are broader and relate to the component without field of use feature, which is a common drafting strategy, the situation is that there are two different « arts » – the art of the component in itself (although such art is rather theoretical) and the art of the field of use, and two different closest prior art. Not always simple for the search and examination.

francis hagelsays:

Additional remark on the choice of the closest prior art in CII cases :

An important decision here is T 2101/12 (Vasco) relating to the provision of electronic signature for documents, in which the closest prior art was identified as the common general knowledge described as the process in a notary’s office.

This decision departs from the doctrine of T 1463/11 (CardinalCommerce) creating a two-layer skilled entity purported to be suitable for CII inventions, including a business person and a technical person. The Vasco decision is in line with the general principle that the closest prior art must belong to the same field of endeavour (in this case, processes in a notary’s office) as the claimed invention.

The Vasco decision is interesting for many other reasons. I had hailed this decision (and criticised the CardinalCommerce doctrine) in an article published in epi information 2-2019.

Avatar photoDaniel X. Thomassays:

The conclusion about the choice of the CPA in T 2101/12 (3.5.06) is way different from that of T 1463/11 (3.5.01). My sympathy goes to T 2101/12. They stem from different boards, but both are working in the same technical field.

To me, this discrepancy makes one of the problems of the BA apparent.

Each board seems to have become a kind of island isolated from all the others, even if they are working in the same technical area. That each board has a great discretion in the way of handling the files it is dealing with, such broad discrepancies should be avoided. Here substantial aspects are at stake, but in procedural aspects the discrepancy is even broader since the RPBA20/21. Decisions of the BA are not any longer reliable are not giving clear replies on substantial or procedural problems.

Users of the system could do with a bit more reliability on key issues. It is also not always the best thing to quickly bring recent decisions into the Guidelines. Once in the Guidelines, a decision is binding for divisions of first instance. It could well be a one-off.

One way of resolving those discrepancies could indeed be a referral to the EBA. It does however depend on the formulation of the questions. The EBA has a clear tendency in the recent years to rewrite or interpret the questions so that a given referral has a specific, not to say wished, outcome. We have seen this especially with G 3/19 and G 1/21. G 2/21 is another problematic decision as it cannot be said that it clarifies the matter sought in the referral.

A nice example on how the closest prior art might change depending on the field of use of a given device is in EQE Paper C 2012. Claim 1 is very broad and not restricted to a specific field, whereas the subject-matter of dependent claims 2-5 is to be used in distinct technical fields and thus require a different CPA.


ad. Mr Hagel’s comments regarding the use of multiple starting points for assessing inventive step, I would like to draw the attention of readers to T 405/14. This contains an extremely detailed analysis at points 17-20 of the reasons which take a firm position in support of the use of alternative starting points, which I tend to find quite convincing.

The same Board later issued T 694/15, which recapitulates some of these points and expands on them – see points 13 and 14 of the reasons.

I also draw readers’ attention to T 2300/18 in this respect.

Avatar photoDaniel X. Thomassays:

Thanks for drawing the attention on T 405/14. The cases in which two pieces of prior art can be considered as CPA are certainly not so frequent, but they can exist and T 405/14 is a perfect illustration of this. T 405/14 and T 694/15 stem from the same board, albeit in a different composition, but the results are coherent.

T 2300/18 goes in the same direction. In Reasons 2, the board held that: “The term “closest prior art” is simply a label given to the prior art from which the inventive step analysis is started. Starting the inventive step analysis from prior art which is (possibly) further away from the claimed invention (e.g. by having less features in common), can merely be expected to make it more difficult to arrive at the claimed subject-matter without involving an inventive step”. There is nothing much to add.

When neglecting the technical field of the invention, one could find a CPA which has lots of features in common with the claim at stake. This does not mean that such a document can actually be considered as CPA.

What is however to be avoided is for an opponent to run a multiplicity of IS attacks starting from various CPA in the hope that one of those attacks will be successful. The RPBA20 have certainly contributed to this frenzy, as what is not submitted in first instance has barely a chance to be admitted in appeal.

francis hagelsays:


Thank you for the reference to T 405/14 and T 694/15. I note that these decisions were issued by the same Board 3.4.01 and have raised very critical comments :

In my view, allowing multiple choices of the closest prior art is clearly hindsight-laden. This runs counter to the objective of the PSA. See excerpts from very recent decisions referring to the established case law.

T 1654/19 (BOA 3.3.03 of 10/2/2023 Reason 28
« It is established case law that the closest prior art should ideally be a document which mentions the purpose or objective indicated in the patent in suit as a goal worth achieving (Case Law, supra, I.D.3.2). The aim thereof is that the assessment process should be based on a situation that is as close as possible to that faced in reality by the inventor, avoiding ex post facto considerations. »

T 0933/18 (BOA 3.3.08) of 27/1/2023 Reason 4.3
« The case law has established that if a piece of prior art can be identified as the closest prior art or the most promising springboard and it can be shown that, starting from this prior art, the claimed invention is non-obvious, then the invention must be even less obvious starting from any other prior art. In these circumstances a detailed inventive step assessment starting from the other prior art document(s) can be dispensed with (see e.g. T 1742/12, Reasons 6.3). »

In addition, allowing multiple choices of the closest prior art increases unpredictability and uncertainties and entails higher attorney fees for the parties.

The choice of the closest prior art should be as objective as possible and the discretion of the deciding body should be minimal. This implies reliance on the principle recalled in T 1654/19 and the “art” of the skilled person relevant to the claimed subject matter.

Avatar photoDaniel X. Thomassays:

Dear Mr Hagel,

I do not think that T 405/14 and T 694/15 deserve the denigrating comments which have been uttered by a British firm of representatives.

As I have said previously, the number of cases in which two documents can be considered equally as CPA is rather low, but simply claiming in general that the CPA can only be one single document is as bad as claiming in general that there are always a plurality of documents representing the CPA.

The decisions you quote are all as such correct and reasonable, but their teaching should not be overemphasised. It should not be forgotten that each T decision is only applicable in the situation it was taken.

In T 1654/19, the opponent appealed the rejection of his opposition. He had started a plurality of IS attacks from different CPA documents, manifestly in the hope that one would be successful. This is exactly what should not be done, but it cannot be avoided. The situation in T 933/18 is similar to that in T 1654/19. I would not draw more conclusions and certainly not claim that there can only be a single CPA.

It is not avoidable that an opponent will try to file as many IS attacks with different CPA in its statement of grounds of opposition. This is also due to the RPBA20. In this respect, the possible height of attorney fees for the proprietor is irrelevant to the opponent. This type of argument is thus anything but compelling.

I would even go as far as consider it irrelevant. In opposition every party bears its own costs and an unsuccessful IS attack is not a reason for a different apportionment of costs.


Perhaps I am missing something but I do not see that article as being critical. Far from it. The authors seem to be broadly understanding of (even if not sympathetic to) the Board’s reasoning in T 694/15 and T 405/14.

I am not sure why the nationality of the representatives should have any relevance to the merits of the comments that they have made.

To Mr. Hagel’s comments about hindsight: any application of the problem solution approach necessarily involves a certain degree of hindsight in selecting the closest prior art. The skill of attorneys, examiners and Boards lies in not allowing that hindsight to contaminate the assessment of obviousness once the starting point has been selected.

Although those two decisions do indeed come from the same Board in different compositions, they are consistent with a line of case law that is recognised in the Case Law of the Boards of Appeal and might therefore be said to be “established” to at least some degree. See I.D.3.1 and cases cited therein starting with T 1742/12, which I will call the “several workable routes” approach.

I can agree with Mr Thomas that this is not always the right approach and it certainly should not be viewed as approving a scattergun attitude where every prior art document is used for an inventive step attack, no matter how far-fetched. But it acts as a counterweight to an excessively formalistic approach whereby there can only ever be one closest prior art document and only one inventive step attack. Frequently the reality is more complicated than that and it is therefore important to take attacks into account as long as they seem reasonable. Unfortunately this does introduce an element of subjectivity into the assessment of what is “realistic”, but it is also arguable that artificially selecting one (and only one) “closest” prior art document is also vulnerable to subjectivity, particularly if the differences between the prior art and the claims are not totally clear cut or if it is debatable which document is truly “closest”, e.g. because there are two documents each differing from the claimed invention by only one feature but where the identities of the similarities and differences vary depending on the starting point.

Max Dreisays:

Hindsight is unavoidable. It starts with the patent drafter, who has hindsight knowledge of both the invention and the prior art. The challenge is to find a way to prevent it determining the outcome of the enquiry into obviousness.

That enquiry should be objective rather than subjective. But given that we are going to use the problem-solution approach, how do we ensure that? I think the answer is to insist that a prior disclosure which is a candidate for the CPA is simply not admissible as such until the Opponent has shown it to be a prior art “starting point” that is “realistic”.

How shall it be determined, what constitutes a “starting point” and what is “realistic”? Easy! It is the drafter of the patent application that seals their own fate, by choosing the technical field and the subjective problem solved by the claimed subject matter. Simply give the inventor ie the drafter, full faith and credit for fixing the field and the problem. What is realistic is assessed relative to that.

But what if the drafter has already done an exhaustive patentability search, knows the prior art inside out and backwards, and so manipulates the field and the problem to defeat problem-solution based objections to patentability? If we give such scriveners full faith and credit, will they get through to grant with claims that should have failed under Art 56, EPC? I doubt it. Most people are vaguely aware of what Robert Burns noticed, that the best laid schemes of mice and men often end in tears. Drafters have too much to lose to be anything other than accurate as to the field and the problem.

Where are the lines of case law that disagree with such thinking?

Avatar photoDaniel X. Thomassays:

Dear Max Drei,

There is nothing much to add to your statement. Any prior art can in principle be considered as CPA. If it is far away from the field of the claimed invention, IS might not be difficult to demonstrate, but it is not a “realistic” starting point. It can have lots of features in common, but if it is from the wrong field, it might neither be a “realistic” starting point.

Any invention is the result of a technical problem to solve. Wanting to stay too general is the recipe for objections of lack of N or lack of IS.

I would claim that, as usual, the truth is somewhere in between. Any independent claim is actually a generalised version of the actual invention, and there is nothing bad in this. When it becomes too broad or speculative, it should not come as a surprise to the applicant that he might not be granted what he hopes.

In an addendum, I have raised a question about the so-called “internal” prior art.

Anonymous Bystandersays:

If you think Carpmael & Ransford’s article contains “denigrating” comments, that says more about your perception of Carpmael & Ransford and how you are reading the article than it does about Carpmael & Ransford.


@Bystander: sadly, this is not the first time that Mr Thomas has expressed views (both in the comments on this blog and on others) which seem to demonstrate a rather negative knee-jerk reaction towards anything coming from the other side of the Channel, merely because of its national origin.

Avatar photoDaniel X. Thomassays:

To Anonymous Bystander and his likes,

Freedom of opinion is a too precious good, not to use it. If I call a spade a spade, it is my good right. At least I give my opinion with an open visor and do not hide behind a pseudo.

I disagreed with the statement of Carpmael & Ransford, and I have seen nothing compelling leading me to a change of position. You might disagree with my views, and this is your good right. It does however not give you the right to speak about myself as you are doing.

Whether the firm of attorneys would have been called Carpmael & Ransford, Marks and Spencer or Roux & Combaluzier, it would not have made the slightest difference. Stating that the attorney firm was British was a statement of fact and not a judgment of value. If the firm would have resided in Patagonia, I would have said it as well.

If somebody from Carpmael & Ransford wishes to say something, I am happy to hear it, and I am open to discuss the matter, but not behind a pseudo. People in Carpmael & Ransford have my private e-mail address.

As far as my alleged aversion to anything British is concerned, I wish to reassure you. Although it is actually none of your business, I need to mention that I have lots of relatives on the other side of the Channel. My children even have dual passports UK/FR. I regularly visit the UK and I always enjoy it. Speaking about my “rather negative knee-jerk reaction towards anything coming from the other side of the Channel merely because of [my] national origin” is thus ridiculous to say the least.

I might disagree on some topics and whether comments originate from the other side of the Channel or not, is actually irrelevant. It just happens that I have to disagree more than often with comments coming from the other side of the Channel. If they came at the same level and frequency from another country, I would also say it. I put a large part of the difference in perception to the difference of approach with common law in the UK and civil law on the continent.

I have tried to give this reply in other blogs, and especially in a well-known UK one, but my replies have never been published. Having now my own blog, I have the opportunity to put the picture straight.

There is no moderation on this blog for the time being, and I do not wish to introduce one. I do however reserve myself the right to delete comments if they do not represent a sound contribution to the topic at stake.

I hope the message has been received loud and clear and this will be the end of anonymous comments which do not bring matters forward. We might disagree, but disagreement is part of life’s rich tapestry.

It is regrettable to have to write such type of reply. I would rather discuss the substance. Anonymous personal attacks have nothing to do on a professional blog. You would certainly not be able to do the same on LinkedIn, so why do it here?

francis hagelsays:

I have responsibility for the heated exchanges between Anonymous/Bystander and Mr Thomas since I quoted the Carpmaels & Ransford article. I quoted it because of its specific relevance to the decisions cited by Anonymous and also because I shared the views of the article. I also wish to say that I have great respect for the UK patent profession and UK magistrates, and I personally regret that they cannot participate in the UPC.

Getting back to the PSA, there is irony as to its introduction at the EPO in the 1990’s. If the story I was told (by a former VP who happens to be French) is accurate, it was a UK contribution, as the key player for making the PSA the standard for EDs was Ben Wallace, then VP in charge of examination. His prime objective was to bridge the gap between pharma/chemical and mechanical/electrical EDs. Perhaps Mr Thomas will wish to add details and confirm or not the story.

I agree with much of MaxDrei and Mr Thomas’ comments regarding the influence of patent drafting. Certainly, drafting claims focused on the field of use of commercial interest to the applicant makes things quite easier. My view is based on my decade-long career as a corporate practitioner, I know from experience that it may not be popular with private practitioners.

As to the issue of hindsight, it is inevitable at the search stage since the search can only made on the basis of the application as filed. This should be kept in mind. Documents can be easily spotted based on keyword searching even if they are remote from the field of the claimed invention. This is why it is important to strive to minimise hindsight in IS assessment and for this, to define a closest prior art as realistic as possible for the person skilled in the art. I do not agree that this is « formalistic », this is quite the opposite.

Max Dreisays:

It is interesrting how one’s career background shapes one’s views about EPO-PSA. My background is in private practive, serving clients in North America, who have a totally different view how to assess what was “obvious”. Many US Americans still think in “First to Invent” fashion, that one should assess obviousness relative to the date of conception of the invention. For them, assessing obviousness as of a date after the patent attorney has made a full patentability search and drafted the application accordingly, in terms of problem and solution, is intellectually a challenge.

Mr Hagel, I’m not sure it was Ben Wallace. He is UK Defence Minister, I believe. Daniel, was it not the estimable David Cadman?

As to starting points, my thinking is that when an opponent or an OD wants to start from the prior publication that is most “promising” for the Opponent because it has the most features in common with the claim, PSA demands that it be rejected as a “starting point” if it would not have been a realistic starting point for a person in the field and struggling with the problem set out in the patent application as filed. I’m thinking of a case about a piston ring: T191/xx if I remember right. If your invention as claimed is an improvement in rings for an ic engine, starting from a ring for an air compressor is inventive, not obvious. Is that Decision still good law, I wonder?

Avatar photoDaniel X. Thomassays:

Dear Mr Hagel, dear Max Drei,

The problem-solution approach can indeed be considered a UK contribution as it was first developed in a chemical BA. The origin of the PSA goes apparently back to T 24/81, chaired by Mr D. Cadman.

For quite a while, the PSA was confined to chemical boards and only slowly diffused into the other technical areas. The last boards to adopt it were mechanical boards. I even remembered seeing decisions of mechanical boards openly disagreeing with the PSA.

Nowadays, there is barely no decision of a BA without the PSA. Some boards even developed some variants, but they were not widely accepted. During my active time as examiner, I never used the PSA as it did not exist at the time.

If my memory is not completely failing, it came as such in DG2 in the early 90ties when it was taken over in the Guidelines for examination. At the time DG2 (Munich), was exclusively responsible for examination, while DG1 (The Hague and Berlin) was dealing exclusively with search. The introduction of BEST changed the whole situation.

The PSA was introduced in the Guidelines at the instigation of VP DG2, at the time Mr William Wallace. I still have a deep respect for Mr Wallace and for what he did for the EPO. He was already involved in setting up the Guidelines at the time of the Interim Committee and was also determining in taking over in the Guidelines some key board decisions in the domain of CII.

In the early years of the EPO, VP1 was always French and VP2 British. This changed later. The early presidents of the EPO came from “smaller” member states, but this also changed later when Mr Koeber became president. In contrast, the chairman of the AC came from a “large” member state. This has also changed in the meantime.

Irrespective of the way of assessing IS, be it with or without the PSA a certain amount of hindsight is not avoidable as it takes a certain time until claims are examined, but in the meantime technology has evolved . The PSA, with all its drawbacks, especially the choice of the CPA, allows to give a more objective assessment of IS. We should never forget that it is no more than a tool.

I am not regretting the exchanges with Anonymous/Bystander and his likes, as it allowed me to put the picture straight. I had enough to be accused of an anti-British attitude. My nationality is actually irrelevant when discussing IP topics, but when some strong views come from a specific area, it is part of the freedom of speech to say so.

Keyword searching can indeed allow to detect documents which can be far away from the technical domain of the invention, but it is still necessary to “intellectually” review the list of documents revealed by the computer search to weed out those which cannot be considered as a realistic starting point. AI might help to first find a series of documents, but AI will only ever carry out what it has been trained to do.

Did you see my addendum?

What do you think?

francis hagelsays:

Dear Mr Thomas,

Thank you for the detailed account of the introduction of the PSA at the EPO. I got it right when I mentioned Mr Wallace, I was only wrong about his Christian name.

As to the whether the PSA is binding on EDs, I note this interesting statement in T 1621/21 of 25 May 2023, Reason 2.1 : « While the use of the problem-solution approach is not mandatory because it is not always reasonably applicable, the examining division should have explained the reasons for not using it. »

Leave a Reply

Your email address will not be published. Required fields are marked *