Introduction
The recent decision of the European Patent Office's (EPO) Technical Board of Appeal, T 0364/20, is a pivotal case concerning the public availability of prior art and the assessment of inventive step under the European Patent Convention (EPC). The case involved European Patent No. 3090026, which describes a composition of paraffin fractions derived from biological raw materials. This blog post examines the invention, the arguments presented by the opponent and the patentee, and the final decision of the Board of Appeal.
Summary of the Invention
The patent in question, EP3090026, owned by Neste Oyj, relates to a composition comprising 40-50 wt-% C14 paraffins and 35-45 wt-% C15 paraffins. These paraffins are derived from biological raw materials, providing a renewable and more sustainable alternative to conventional paraffins derived from petroleum. The invention claims to offer a novel composition with specific paraffin fractions, beneficial for various industrial applications.
Summary of the Board of Appeal Decision
The opponent, UPM-Kymmene Corporation, challenged the patent on the grounds of lack of inventive step, relying heavily on a master's thesis (D4) from Aalto University as prior art. The key issues addressed by the Board were:
- Public Availability of D4: The opponent argued that D4 was publicly available before the priority date of the patent, thus constituting prior art under Article 54(2) EPC. The Board agreed, noting that under Finnish law, university theses are publicly accessible immediately upon approval unless explicitly restricted. The Board found no evidence of such a restriction in this case.
- Inventive Step: The opponent argued that the claimed composition lacked inventive step, as the specific paraffin fractions were disclosed in D4. The opponent contended that the differences between the claimed invention and D4 were minimal and did not confer any significant technical advantage. The Board agreed, concluding that the claimed composition represented an obvious alternative to the prior art, lacking an inventive step as required under Article 56 EPC.
- Patentee's Arguments: Neste Oyj argued that D4 was not publicly available before the priority date and that the claimed composition provided unexpected technical benefits, particularly in terms of viscosity. However, the Board rejected these arguments, finding that D4 was indeed public and that the technical effects claimed by the patentee were either non-existent or predictable.
- Final Decision: The Board revoked the patent, concluding that D4 was prior art and that the claimed invention did not involve an inventive step.
Lessons to Be Learned
This decision offers important lessons for patent practitioners:
- Thorough Investigation of Prior Art: Establishing the public availability of prior art, such as university theses, is crucial. This case illustrates the importance of verifying the availability and status of such documents before the priority date.
- Inventive Step Assessment: Providing an alternative to existing compositions without demonstrating a significant technical advantage is unlikely to satisfy the inventive step requirement. Practitioners should ensure that the claimed invention offers a non-obvious technical contribution over the prior art.
- Timely and Strategic Filing of Auxiliary Requests: The patentee's failure to file auxiliary requests in a timely manner, leading to their inadmissibility, underscores the importance of strategic planning during opposition and appeal proceedings.
Contact
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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.