The EPO concept of what is understood as the closest prior art cannot prevent the assessment of the inventive step requirement
Autor: Oriol Ramon
Some recent decisions of Spanish Courts have stated that the party challenging a patent has the right to have the question of the inventive step requirement assessed according to the disclosure of the prior art that it has chosen as a starting point. If it has chosen a piece of prior art that is not as closed to the claimed embodiment as another one, in the end, this may prejudice its own position in the proceedings, but the patentee cannot prevent the assessment of the inventive step according to the approach that has been presented by the party challenging the patent (Orders dated 27 December 2017 of Section 15 of the Appeal Court of Barcelona, 18 July 2018 of Commercial Court 4 of Barcelona and Judgment 13 February 2018 of Commercial Court 4 of Barcelona).
This approach is consistent with some recent Decisions of the Boards of Appeal of the EPO: T 855/15 and T 1742/12. In T 855/15 the Board stated that: “the ‘remoteness’ of a piece of prior art from the claimed invention does not, in itself, rule out an assessment of inventive step in view of that prior art” (8.2). The same Decision recalled that “In fact, the board considers that a consideration of what the skilled person would do, in particular whether the skilled person ‘would select’ a document, in order ‘to arrive at the invention as claimed’ would amount to hindsight reasoning” (8.3).
A similar approach was made in T 1742/12 when it stated that although the closes prior art could be understood as a disclosure for the intended purpose of the claimed invention “this does not prohibit the consideration of an inventive step assessment starting from a piece of prior art with a different purpose” (9). The same decision continuous saying that “the appellant’s argument amount to saying that knowing more can make an invention less obvious to the skilled person […] If an argument showing that the claimed invention was obvious over some prior art, this argument cannot be refuted merely be the introduction of another piece of prior art. In the board’s view, this would be an absurd situation in conflict with Article 56 EPC, and therefore be untenable” (10).