EPO: Implementing the most promising springboard

Managing IP is part of Legal Benchmarking Limited, 1-2 Paris Gardens, London, SE1 8ND

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

EPO: Implementing the most promising springboard

The European Patent Office uses the well-established problem-and-solution approach when assessing inventive step (cf. Guidelines for Examination at the EPO G.VII 5). A crucial part of this analysis is the starting point, known as the "closest prior art".

The selection of the closest prior art document is important, as it may prove easier to arrive at the claimed invention from one document than from another document. Selection of a particular document as the closest prior art generally sets the course for an assessment of inventive step.

There have been various approaches to selecting a document as the closest prior art. For many years, the Boards of Appeal at the EPO seemed to hold the opinion that there was one – and only one – document which could constitute the closest prior art. During EPO examination proceedings, and especially EPO opposition proceedings, parties before the EPO made great efforts to persuade EPO examiners that their choice of closest prior art was the correct one. Once the relevant document had been identified, arguments which started from other documents (however valid) were typically not accepted.

A change in this practice came about with the acceptance that there could be other, equally valid, problem-and-solution analyses, having different starting points. The Boards of Appeal moved to the position that a patent could be refused if it lacked inventive step on the basis of one relevant document, even if parties presented different problem-solution reasoning (cf. T308/09 and T1289/09). A lack of inventive step over a first document could not be refuted by arguments relating to a different prior art document. This developing case law was reflected in the EPO Guidelines for Examination.

EPO practice had moved away from a discussion of which document was closest to the invention. This led to opponents in EPO opposition proceedings launching multiple inventive step attacks from a range of documents, while patent proprietors had to prepare counterarguments against any conceivable starting point.

In the most recent update to the EPO Guidelines for Examination (valid from November 1 2018), this approach has been refined once again. With reference to decision T320/15, multiple inventive step attacks from multiple starting points are only allowed if the documents selected are "equally valid springboards". In particular, opposition proceedings are not seen as "a forum where the opponent can freely develop as many inventive step attacks as he wishes in the hope that one of said attacks has the chance of succeeding."

The pendulum has now swung somewhat back, and it is hoped that this lightens the burden on patent proprietors in terms of the number of inventive step arguments they need to combat in future.

Edward J Farrington



Inspicos A/S

Kogle Allé 2

DK-2970 Hoersholm

Copenhagen, Denmark

Tel: +45 7070 2422

Fax: +45 7070 2423

info@inspicos.com

www.inspicos.com

more from across site and SHARED ros bottom lb

More from across our site

PepsiCo was represented by PwC, while the Australian Taxation Office was advised by Australian-headquartered law firm MinterEllison
The firm said revenue from its ‘refreshed and expanded’ IP team increased by 4% in FY25
As revenue reporting season hits full stride, firms have made a point of highlighting the successes of their IP teams as they take centre stage in big-ticket work
GSK and CureVac will together receive $740 million, as well as royalties on sales of COVID-19 vaccines in the US
The firm, which represented Getty in one of the most closely followed copyright cases in recent years, said IP was among its standout practice areas
The decision to divide was partly due to differing visions over the impact of technology on IP work, according to one partner
The Bar Council of India’s warning to Dentons Link Legal and CMS IndusLaw shows why foreign firms are right to worry about India’s legal market
News of a trade secrets leak involving TSMC and an action in Japan against AI startup Perplexity were also among the top talking points
Rothwell Figg partner Leo Loughlin discusses the importance of pro bono work and why ‘For the Kids’ should not be monopolised for trademark purposes
A new consultancy firm, set up by a former Warner Bros and Netflix lawyer, aims to resolve tensions between AI developers and the creative industries
Gift this article