4.3.1 Sufficient evidence for alleged advantages

According to the established case law of the boards of appeal, alleged advantages to which the patent proprietor/applicant merely refers, without offering sufficient evidence to support the comparison with the closest prior art, cannot be taken into consideration in determining the problem underlying the invention and therefore in assessing inventive step (see e.g. T 20/81, OJ 1982, 217; T 181/82, OJ 1984, 401; T 1051/97; T 632/03; T 1211/07; T 736/12; T 2400/12; T 825/18; T 2210/19). In T 1027/08 the board added that there was no reason to deviate from this case law as it was based on the understandable rule that a patent could only properly be granted for a solution claimed as non-obvious if it actually achieved the alleged effect.

If the patent proprietor/applicant alleges the fact that the claimed invention improves a technical effect, then the burden of proof for that fact rests upon him (T 355/97, T 1213/03, T 1097/09, T 2418/10, T 1487/16). In the absence of any data confirming the alleged improvement, such an effect cannot be taken into account in the formulation of the technical problem (T 2044/09).

In T 524/17 the board found it was not credible that the problem was solved over the whole range claimed. It held that where the closest prior art already showed improved values for certain properties which were said in the patent to be improved, it was up to the proprietor to show by means of suitable evidence that there was indeed such an improvement. In the absence of such evidence, it must be concluded that there was no such improvement and, thus, the problem was not solved. In T 1346/16 the board concluded that the claimed subject-matter could be plausibly considered to have solved the technical problem ("technically plausible").

In T 946/16 the board rejected the patent proprietor's formulation of the problem because it defined the quality of the copolymers obtained by the claimed method purely in absolute terms ("high quality"). To arrive at a an objective definition of the problem actually solved as compared with the closest prior art (D2), it instead had to be established whether the copolymer quality achieved using the claimed method was higher, similar or lower than that achieved in D2. In view of the technical arguments and the evidence adduced, the board considered that the patent proprietor had failed to show that the alleged improvement in copolymer quality over that achieved using the prior-art method was credible.

In T 2514/16 the board found that the respondent had demonstrated with D16 that an effect was achieved for at least part of the claim at issue and that the burden of proving that this effect was not achievable across the whole breadth of the claim thus lay with appellant 1. Appellant 1 contended that, according to T 1188/00, it was for the patent proprietor to prove this. The board, however, considered that the reason that conclusion had been reached in T 1188/00 was that the effect (improvement) alleged by the patent proprietor there had been found to be not credible, and so the circumstances were not comparable with those now at issue. In the absence of relevant comparative tests, appellant 1's objection was held to be unconvincing.

In T 575/17 the board held that, where there was no direct or plausible disclosure in the application as a whole of how the envisaged effect of the invention was achieved or of why the problem was solved by the claimed features, how this worked could also be deduced from the teaching of other (pre-published) documents. In the case in hand, the board, referring to documents E1 to E3 and E5, observed that using prefabricated implants for better thermal conductivity had long been known in detail. The skilled person would have no technical difficulty in applying the teaching of these documents to the "insulated metal substrate" technology that had later become established. It did not matter that the documents recorded an "old technology"; they contained the general technical teaching that an object inserted into the metal (substrate) could be used to improve the conduction of an electrical component's heat.