EPO Board of Appeal dismisses step-by-step inventive step attack for being based on hindsight and cherry-picking (T 1349/19)

A recent case from the Boards of Appeal (T 1349/19) rejected a lack of inventive step argument that the skilled person would follow an obvious series of steps at arrive at the invention. The Board of Appeal further dismissed a further lack of inventive step argument based on the juxtaposition and overlap of a multitude of prior art disclosures. The case provides some clear language rejecting taking an approach to inventive step that is based on knowledge of the destination. The decision is worth a read for anyone seeking to defend innovations relating to formulations comprising optimised combinations of known features and excipients.   

Case Background


The granted patent (EP2956010) related to a fat composition for use in milk for babies. The patent was maintained in amended form at Opposition. The Opponent appealed this decision. 

On appeal, the closest prior art was identified as another patent application also relating to baby milk (WO 2006/114791).  A problem to be solved in the baby formulation market is the provision of milk that mimics human milk as much as possible whilst also being cost effective. For the Board of the Appeal, both the prior art and the claimed invention could be said to solve this problem. Particularly, given the lack of any evidence showing that the milk of the invention was better at mimicking human milk than that of the closest prior art, the claimed invention could not be said to be an improvement, but merely an alternative, in view of this prior art. 

The problem to be solved in view of the closest prior art was therefore identified as the provision of an alternative milk for babies. The question thus became whether, in view of the known composition of human milk, the skilled person would arrive at the claimed fatty acid composition in a stepwise manner from the disclosure of the closest prior art. 

Hindsight and cherry-picking?

The composition specified by claim 1 contained different amounts of fatty acids than the closest prior art. The Patentee argued that, in order to arrive at the claimed invention from the prior art, the skilled person would have had to perform a long list of steps. The Opponent agreed, but argued that these steps were "interconnected such that a change in one will have an influence on one or more of the other steps". The Opponent also pointed to all of the disclosures of the prior art relating to various fatty acid compositions. The Opponent argued that the fatty composition specified by the claim could be considered a mere juxtaposition of obvious features selected by cherry-picking from these features. 

The Opponent's lack of inventive step arguments in this case were similar to the types of argument successfully employed in the UK courts in, for example, Actavis v ICOS ([2019] USKC 15, IPKat) and Bayer v Teva ([2021] EWHC 2690 (Pat), IPKat). In these cases, pharmaceutical drug doses and salt forms that were multiple steps removed from the prior art were found obvious in view of the normal step-by-step process and incentives of drug development. 

In the present case, however, the Board of Appeal did not agree with the Opponent that the optimised baby milk was obvious. The Board of Appeal particularly found that whilst the skilled person might have taken some of the steps along the path to the claimed invention in view of the prior art document, the incentive to perform the additional steps required was lacking. The Opponent had not shown, for example, that the replacement of palm oil with another commercially available oil (medium chain triglyceride) would have been obvious to the skilled person from their common general knowledge. 

The Board of Appeal further found that the prior art could not just be juxtaposed in order to arrive at the claimed invention. Particularly, the Board of Appeal found that the amount of each individual fatty acid in the claimed invention could not be freely varied within the entire breadth of ranges created by piecing together the teachings of different prior art documents:

"The cautious and conservative skilled person would not have considered the aforementioned broad, artificially created ranges to be guidelines for preparing fat blends for replacing human milk fat. Therefore, they would not have been motivated to prepare the claimed fat composition in the manner suggested by the appellant.

[...] the appellant's arguments involve a convoluted set of sequential steps conceived starting from the compositions defined in claim 1 and working backwards, in an attempt to bridge the considerable gap with the composition described in [the closest prior art]. Since these steps are not suggested by the prior art, they can only be taken by exercising hindsight."

Final Thoughts

The EPO's rejection of the Opponent's juxtaposition argument is in contrast to the patchwork style of obviousness argument patent applicants face in the US (although there is no equivalent US patent in the present case with which to compare). 

The approach of the Board of Appeal also contrasts with that often taken by the UK courts. Judges in the UK are often convinced, on the back of expert testimony, that the series of steps required to arrive at a claimed invention would have been obvious to a skilled person intent on solving a particular problem. As this case demonstrates, the Boards of Appeal of the EPO are generally more accepting to arguments that the supposed clear path to a claimed invention has only become clear with the benefit of hindsight. Ironically, the Patentee in T 1349/19 may have also been assisted by the lack of a clear problem to be solved, given that the objective problem to be solved was identified as the mere provision of an alternative baby milk. Without a clear destination, the correct path will be more difficult to find. 

Further reading

The challenge of patenting combination claims at the EPO (24 Jan 2022) 

Bayer v Teva: Drug patent found "the result of standard and routine considerations" ([2021] EWHC 2690 (Pat)) (28 Nov 2021)

Supreme Court confirms no hard line on inventive step test in finding Cialis dosage patent obvious (27 March 2019)

EPO Board of Appeal dismisses step-by-step inventive step attack for being based on hindsight and cherry-picking (T 1349/19) EPO Board of Appeal dismisses step-by-step inventive step attack for being based on hindsight and cherry-picking (T 1349/19) Reviewed by Rose Hughes on Monday, October 24, 2022 Rating: 5


  1. Three points (even before reading the decision in full):

    1. On the issue of setting the height of the bar that constitutes the objective technical problem (OTP) can it get any lower than the "trivial" problem of finding "an alternative". I vaguely remember an observation from more than 30 years ago from a learned British commentator, to the effect that the patentee would not have lost if it had chosen to define the OTP less "ambitiously". This seems to chime well with what Rose Hughes writes here. Perhaps Paul Cole can remember who the commentator was (a former editor of the CIPA Blue Book if I remember right) and the case that prompted the remark. I remember at the time raising my eyebrows, as I do again here upon reading the remark that setting the OTP as "mere alternative" might have assisted the patent owner to fend off the Art 56 attacks.

    2. Partial problem jurisprudence. Is it not relevant here, where apparently there is no synergy? Take for example substitution of the palm oil ingredient. Doesn't everybody try, all the time, for sustainability reasons, to manage without palm oil, independent of any other formulation issues?

    3. Perhaps one can read into "alternative" a requirement for the product performance to be at least as good as that taught by D1, and if we suppose that what is disclosed in D1 is the "best mode" then it might well require invention to identive an alternative that is just as good. Is that the point?

  2. If the OTP is a trivial one, providing an alternative widget, this is a well trodden route for the EPO to declare the claimed subject matter as non-inventive. Of course, the "could" aspect may be satisfied but if there is no objective benefit, is the "would" aspect present?

  3. If the closest prior art was a patent (application), then the OTP might well be finding an alternative which does infringe this patent (application).

    Anyway, I agree that the partial problem attacks are sometimes overlooked at the EPO


All comments must be moderated by a member of the IPKat team before they appear on the blog. Comments will not be allowed if the contravene the IPKat policy that readers' comments should not be obscene or defamatory; they should not consist of ad hominem attacks on members of the blog team or other comment-posters and they should make a constructive contribution to the discussion of the post on which they purport to comment.

It is also the IPKat policy that comments should not be made completely anonymously, and users should use a consistent name or pseudonym (which should not itself be defamatory or obscene, or that of another real person), either in the "identity" field, or at the beginning of the comment. Current practice is to, however, allow a limited number of comments that contravene this policy, provided that the comment has a high degree of relevance and the comment chain does not become too difficult to follow.

Learn more here: http://ipkitten.blogspot.com/p/want-to-complain.html

Powered by Blogger.