Introduction
On April 25, 2024, the Technical Board of Appeal 3.3.05 of the European Patent Office (EPO) issued its decision in case T 0989/22 concerning European patent No. 3384061. The decision primarily addressed the issues of novelty and inventive step for an aluminum-copper-lithium alloy, which was opposed by Arconic Corporation. The ruling provides critical insights into how the EPO approaches the assessment of overlapping ranges in prior art and the requirements for demonstrating inventive step.
Summary of the Invention
The patent in question, EP 3384061, concerns a rolled and/or forged product made from an aluminum alloy comprising specific percentages of copper (Cu), lithium (Li), zinc (Zn), magnesium (Mg), and other elements. The invention aims to provide an alloy with improved mechanical strength and toughness, suitable for use in aerospace and other high-performance applications. The particular composition of the alloy is intended to offer a superior balance between static mechanical properties and damage tolerance, thermal stability, corrosion resistance, and machinability.
Summary of the Decision
Arguments by the Opponent (Arconic Corporation)
Arconic Corporation challenged the patent on two main grounds: lack of novelty (Article 54 EPC) and lack of inventive step (Article 56 EPC). They argued that the claimed alloy composition was either disclosed in or obvious from prior art, particularly citing documents D10 and D11. Arconic's key argument was that the overlap in compositional ranges between the claimed invention and the prior art should negate the novelty of the patent. They further argued that the claimed benefits of the alloy, particularly regarding zinc content, were not credible across the entire claimed range.
Arguments by the Patentee (Constellium Issoire)
Constellium Issoire defended the patent, arguing that the specific combination of elements in the claimed ranges was neither disclosed nor suggested by the prior art. They emphasized that the claimed alloy's improved properties were not achievable through routine modifications of known alloys. Constellium also provided experimental data to demonstrate that the advantageous properties of the alloy, such as its enhanced toughness and mechanical strength, were indeed linked to the specific ranges of elements claimed.
Decision of the Board of Appeal
The Board of Appeal upheld the decision of the Opposition Division, confirming the novelty and inventive step of the claimed alloy. The Board noted that, although there was some overlap between the ranges of elements in the claimed alloy and those disclosed in prior art, the prior art did not directly and unambiguously disclose an alloy falling within the specific combination of claimed ranges. The Board applied the principle that overlapping ranges in prior art must disclose the claimed invention directly and unambiguously to destroy novelty, which was not the case here.
Regarding inventive step, the Board agreed with Constellium that the specific alloy composition was not obvious to a skilled person, even considering the closest prior art. The Board found that the evidence provided by Constellium convincingly demonstrated the unexpected technical benefits of the claimed alloy, particularly the balance between strength and toughness, which supported the presence of an inventive step.
Lessons to be Learned
- Assessment of Overlapping Ranges: This decision reinforces the principle that overlapping compositional ranges in prior art do not automatically negate novelty unless the overlap is directly and unambiguously disclosed. Patentees should carefully define their claimed ranges to avoid prior art traps while ensuring that the novel aspects are clearly highlighted.
- Demonstrating Inventive Step: The case highlights the importance of providing robust experimental evidence to support claims of inventive step, particularly when arguing that specific technical benefits arise from the claimed invention. Such evidence can be crucial in distinguishing the invention from prior art and establishing its non-obviousness.
- Strategic Use of Experimental Data: Patentees should be prepared to use experimental data strategically during opposition and appeal proceedings. Well-prepared data can effectively counter challenges regarding the credibility of claimed benefits, as seen in this case.
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.