Introduction
The European Patent Office's Board of Appeal decision T 0196/22, concerning a lawn-care apparatus patent application (EP 2048933), addressed significant points on inventive step, particularly the synergy of claimed features and the combination of technical effects. The central legal issues revolve around whether the invention's individual features interact synergistically to produce a new effect and whether each feature, when viewed independently, meets the requirements for inventive step under Article 56 EPC. This decision highlights the criteria for evaluating inventive steps in cases involving aggregate versus synergistic combinations of features and provides clarity on the admission of auxiliary requests during opposition proceedings.
Invention Summary
The invention in question involves a lawn-care apparatus, specifically a lawnmower, that combines several advanced features intended to improve efficiency, durability, and ease of use. The apparatus is powered by a battery, specifically a lithium-ion battery, and features an electronically commutated motor (EC motor). It includes a battery compartment with an openable cover and incorporates a control system with a feedback speed control and battery-condition monitoring (including voltage and temperature monitoring). This monitoring circuitry is integrated with the control system electronics, purportedly enhancing the apparatus's overall efficiency and safety.
Summary of the Board’s Decision
The decision discusses multiple auxiliary requests filed by the patent proprietor, Robert Bosch GmbH, and challenges raised by opponents Andreas Stihl AG & Co. KG and ikra GmbH. Below are the primary arguments from each side and the Board's final stance.
Arguments by the Opponents
The opponents contended that the claimed features did not demonstrate any novel synergistic effect when combined. They argued that each feature (e.g., the lithium-ion battery, the EC motor, and the control system) served distinct purposes and did not combine to yield a unique, inventive effect. Thus, they should be evaluated separately for inventive step. They further claimed that each feature, individually, was either disclosed or made obvious by prior art, including documents D2 and D15, making the claim as a whole unpatentable due to lack of inventive step.
Arguments by the Patentee
Robert Bosch GmbH, the patent proprietor, argued that the combination of the EC motor with the lithium-ion battery, control system, and monitoring circuitry created a synergistic effect that would not have been obvious to a skilled person. They contended that these features worked collectively to enhance the apparatus’s performance, especially in demanding conditions, thus justifying the claim’s inventive step. The patentee highlighted the efficiency and operational stability offered by combining these features, insisting that such integration provided a lightweight, high-performance lawn-care apparatus with enhanced control and safety.
Board’s Final Decision and Analysis
After evaluating the arguments and evidence, the Board decided that the claimed features did not interact synergistically to produce an effect that exceeded the sum of their individual effects. Referring to established case law (Case Law of the Boards of Appeal, 10th edition, I.D.9.3.1, T 1054/05), the Board found that without a combined effect exceeding each feature's standalone effect, the invention lacked synergy and should be assessed as an aggregation of individual parts.
Key aspects of the Board’s reasoning
Inventive Step (Article 56 EPC): The Board confirmed that the individual features were known from prior art or obvious modifications thereof. The lack of synergy among the features meant that they could be assessed independently for inventive step.
Admission of Auxiliary Requests: The Board declined to admit new auxiliary requests presented during oral proceedings, noting an absence of exceptional circumstances as required by RPBA 2020 Art. 13(2).
Conclusion
This decision serves as a guide on the assessment of inventions with multiple claimed features. It underscores the importance of establishing a true synergy among features when claiming an inventive step in combination inventions. Below are some critical takeaways:
Lessons to be Learned
Synergy vs. Aggregation of Features: When multiple features are claimed together, applicants should demonstrate that these features interact to produce a combined effect greater than the sum of individual effects. Merely functional coexistence does not satisfy the synergy criterion under Article 56 EPC.
Clear Objective Technical Problem: Defining a clear technical problem that the invention addresses and showing how the claimed combination uniquely solves it can strengthen claims involving multiple features.
Documentation of Synergistic Effects: Evidence or explanation of a synergistic relationship among claimed features is essential for supporting an inventive step argument. The Board will look for a clear link between features that leads to an additional, unexpected effect beyond isolated improvements.
Auxiliary Requests and Procedural Admittance: The Board has discretion in admitting late auxiliary requests, especially if they are presented after procedural deadlines. Applicants should aim to submit comprehensive requests early in the process, as exceptional circumstances are required for late submissions to be accepted.
Referencing Prior Art Judiciously: When prior art includes similar features individually, applicants should differentiate how the claimed combination is unique. Applicants may wish to focus on unexpected technical effects that distinguish the invention from mere adaptations of known elements.
Contact
If you have any questions concerning intellectual property issuesor need assistance with patent applications, oppositions, or appeals, please do not hesitate to contact us at Novitech IP. Our team of experienced professionals is here to provide you with expert guidance and support. Reach out to us today to discuss how we can help protect your innovations and navigate the complexities of IP law.
To stay informed about the latest reviewsand updates in IP law, subscribe to our blog. Join our community and receive notifications whenever we publish new reviews and insights on important case law and developments in the field of intellectual property.
Legal Disclaimer
The information provided in this blog post is for generalinformational purposes only and does not constitute legal advice. The summary and analysis of the EPO case are based on publicly available information and are intended to offer insights into the decision and its implications. This content should not be used as a substitute for professional legal advice tailored to your specific circumstances. For advice related to any specific legal matters, you should consult a qualified attorney.