The patent relates to a method of controlling the rate of oxygen transfer from the atmosphere into wine.
The case is interesting as it deals with the definition of the objective technical problem and how the notion of long-felt need can support inventive step.
Brief outline of the case
The ISR/AU revealed 4X documents. The SESR revealed no less than 8 further X documents and 1A document.
The prior art taken into account by the OD and the board, i.e. D1=AU 715897 related to a plastic container permeable to oxygen and the liquid to be oxidised was sherry and not table wine. D1 was the 1st X document in the ISR/AU.
The proprietor appealed the revocation of its patent.
Claim 1 as granted lack of IS over D1=AU 715897 [1st X in ISR/AU] and common general knowledge. This was already the conclusion of the OD.
Therefore, the patent should not have been granted on the basis of the MR.
Claim 1 of AR 1, 2, 5 and 6 lacked of clarity.
Claim 1 of AR3, 4 and 7-10 lacked IS.
The board thus confirmed the revocation of the patent.
The discussion on the Objective Technical Problem
The OD considered that the subject-matter of claim 1 as granted differed from the disclosure in the two following aspects:
- (i) the wine is stored in the container for a period ranging between 4 months and 36 months, and
- (ii) the total rate of oxygen transmission into the wine is less than 55 mg/litre of wine/year.
In the proprietor’s favour the board added two further differences:
- (iii) the plastics material of the walls has an intrinsic oxygen permeation rate of 13 mg to 65 mg of atmospheric oxygen per square metre of the wall area for each 1 millimetre of the walls thickness per 24 hour period at room temperature, and
- (iv) the container is self-supporting and the walls of the container comprise a rigid plastics material.
The following effects resulted from the various differences
- the distinguishing features (i) and (ii) have the consequence that one litre of wine will be in contact with less than 3·55 mg, i.e. less than 165 mg, of oxygen during the entire storage period, and
- the distinguishing features (iii) and (iv) were not linked to a surprising technical effect.
For the board, the objective technical problem was to provide a method which yields a wine with a lower degree of maturation than the sherry wines in D1.
The applicant argued that an objective technical problem, if any, could only be formulated inadmissibly.
If at all, for the applicant it was to be considered that of changing the properties of the container in D1, which was suitable for the production of sherry, in such a way that it was suitable for producing table wine.
The board disagreed and held that it is the storage period and the total rate of oxygen transmission which determine the total amount of oxygen to which the wine is exposed during storage and these features and their effect have been taken into account by the board in formulating the objective technical problem.
Long felt-need – The applicant’s position
With regard to obviousness, the appellant referred to the long period between the publication year of D1 (1974) and the filing year of the patent (2004). The patent therefore satisfied a long-felt need. This was an indication of inventive step.
Long felt-need – The board’s position
The board concurred with the view expressed e.g. in T 605/91 (point 4.4.1 of the Reasons).
The mere fact that a long period of time has elapsed between the publication of a prior-art document and the patent is not sufficient to prove the existence of a long-felt need. Such a “need” would appear to have persisted only if various and repeated attempts to obtain the invention of the patent starting from an embodiment such as those disclosed in D1 could be identified. This is not the case here.
The definition of the objective technical problem
The objective technical problem defined by the applicant was not related directly to the differences found by the board but were of much more general nature. After all sherry is also a wine like the table wine which is considered in the patent.
Stating that the objective problem can only be formulated inadmissibly is quite daring and against the well established problem-solution-approach.
The way the applicant defined the objective technical problem was not based on the precise differences established by the board according to the problem-solution-approach.
Long felt need
A long felt need is at best a secondary indicator of inventive step, cf. Guidelines G-VII, 10.3. It does not justify on its own inventive step.
In T 617/06, the board held that the age of document D2 (1975) alone is – in the absence of further evidence – not sufficient to demonstrate a long-felt need or the blindness of the persons skilled in the art.
A similar conclusion can be drawn from T 179/18. In this decision, the board added that the application of the problem-solution approach has led to the clear result that the subject-matter of claim 1 does not involve an inventive step.
4 replies on “T 252/17 – Definition of the objective technical problem – Long-time felt need”
Daniel, I haven’t yet read the decision but your summary of it prompts the following thought. Isn’t this more a matter of fixing in accordance with the established case law what is a fair “prior art starting point”?
I gather that D1 is within the “sherry” field but the claim is confined to the “table wine” field. For the skilled person seeking to improve table wine storage, would a disclosure in the field of sherry be a “realistic” starting point? Yes or No? If no, then EPO-PSA needs a different launch pad. But if Yes, the Art 56 attack is well-launched and destined to succeed.
If an ED announces that D1 is a valid starting point, what (in the real world) can an Applicant do (apart from denying the legitimacy of EPO-PSA) to stop the ED proceeding on that basis?
Incidentally, I see that, here, it was a leading Paris firm who had the effrontery to argue against the application of PSA. Daring, you say. I have in mind a somewhat stronger word to describe such advocacy.
Dear Max Drei,
An ED is free to announce that D1 is a valid starting point, but this is not the end of the story.
It is only a valid point if the decision of the OD is confirmed by a BA.
This is what happened in the present case.
Provided that a BA confirmed the view of the ED, an Applicant cannot stop the ED proceeding on that basis, apart from denying the legitimacy of EPO-PSA.
I have never applied the PSA as at the time I was examiner it did not exist.
In the present case the lack of IS can be decided without applying the PSA.
What is at stake here, is a selective oxidation of an alcoholic beverage stored in a plastic container which is as such permeable to oxygen.
This property is actually well known. Leave something moist in a plastic packaging, after enough time it will be dry.
This is a proof that there is an exchange between the content and the ambient.
It cannot be inventive to apply mutatis mutandis what is known in general to “normal” wine instead of sherry.
I agree with you that a leading Paris firm had the effrontery to argue against the application of PSA. I am not surprised.
At a recent conference during which only praise for the UPC was distilled, a patent representative of this firm was sitting in a discussion panel.
For firms like this one, a lot of patents have to be granted so that the UPC becomes a success.
That it might not be a success for all is secondary, as long as the pockets of some are generously filled.
In this case, both the patentee and the opponent were represented by leading Paris firms. This probably makes sense, since the case relates to wine. Their submissions while fairly lengthy are sometimes colourful.
MaxDrei, it is amusing that you call effrontery an argument challenging the PSA. Is the PSA a sacred cow ? Personally I think it is an effective tool to avoid hindsight bias and ensure consistency within EDs, but as for any tool, there are limits to its field of validity
Quoted from the Paris Appeal Court decision I-Tek v Heughbaert of 19 Jan 2021 : “L’article 56 de la CBE n’exige pas pour déterminer si un brevet procède ou non d’une activité inventive de procéder par une approche problème-solution supposant de définir au préalable un état de la technique le plus proche du brevet attaqué, qui est propre à la chambre de recours de l’OEB et ne s’impose pas aux juridictions françaises.”
The Paris Appeal Court acknowledges that the PSA is peculiar to the EPO BOA but insists that it is not binding on French courts. This may explain that not all French patent professionnals are loyal to the PSA.
Dear Mr Hagel,
Thanks for your comment. Although it was addressed at Max Drei, i take the liberty to reply.
Indeed, the problem-solution-approach (PSA) is a creation of the boards of appeal of the EPO.
It started in chemistry and slowly diffused in other technical boards. Mechanical boards were the longest to resist.
As I said to Max Drei, I never applied the PSA as it did not exist at the time I was examiner.
Presently, you will however see only very few decisions of a BA not applying the PSA.
Not to forget, any candidate to the EQE must know the PSA and apply it even sleepwalking.
The problem is that in quite a few case the PSA is not properly applied.
This leads some people to have a negative opinion about it.
The PSA have advantages as it allows to be more objective when assessing IS, but it also has some drawbacks.
More than often, there is a debate about which document can be considered as the CPA.
The PSA is a mere tool, in my opinion a useful one, but you will not find any trace of it in the EPC.
It is thus perfectly legitimate that national courts, do not or are reluctant to apply the PSA.
There is thus nothing to worry about the position taken by the Court of Appeal of Paris.
It is part of the freedom of any national court to follow or not the case law of the BA, and vice-versa.
Some national courts even claim to follow the case law of the BA, but actually have a different approach.
It will be however interesting to see whether the UPC, once and if it opens, will adopt the PSA when it will have to decide on validity.
For this we will have to wait a bit, at least until the Court of appeal of the UPC will have given some decisions.
In view of its composition with national judges the PSA might not be applied by the UPC..