Board of Appeal of the EPO: An alleged non-obvious effect of a feature cannot support inventive step
EPA, Decision of 18.11.2020 – T 0517/16, Generating a Source Code
A claimed technical effect may be disregarded in the assessment of inventive step if it cannot be considered plausible for the claimed subject-matter in its full scope and is not made plausible in the description.
The appeal is directed against the decision of an Examining Division of the EPO to reject a European patent application relating to a computer-implemented invention for insufficient disclosure. The appellant requests that the decision be set aside and the case be remitted to the Examining Division for further examination.
The appeal was dismissed. The Board of Appeal stated in its grounds that the application related to a method for automatically generating source codes for complex processes of a technical or business nature. According to the description, a user could create "process diagrams" from which a "process file" was generated.
Claim 1 differed from the prior art in that a separate source code file was generated for each process. The description it is stated that the claimed invention led to less voluminous, less error-prone and faster source code. However, the board finds this implausible for the claimed subject-matter in its full scope and not made plausible in the description.
The board finds it obvious to assume that the complexity of the source code depends, inter alia, on the form of the process file. A procedurally defined process file - as opposed to an object-based process file - would presumably lead to simpler source code if a procedural programming language was chosen. The assumption that this source code is less error-prone and faster seems justified. However, this failed the assertion that the invention had the claimed effects in their whole scope. These specific effects would therefore have to be disregarded when assessing the inventive step.
Thus, claim 1 was obvious in view of the general knowledge of the skilled person, so that the application had to be rejected in the end.
This new decision is in line with the EPO's principles that alleged advantages of the invention over the prior art cannot be taken into account for the assessment of inventive step unless they are sufficiently substantiated (T 0020/1981) and that the same skilled person must be consulted for the assessment of inventive step and sufficient disclosure (T 0967/09). Furthermore, this decision is in line with the current case law on computer-implemented inventions (see also the decision of the Enlarged Board of Appeal G1/19).
The decision once again shows how important it is to present all features as well as their effects and advantages in a well-founded manner already when drafting the application text. This applies in particular to computer-implemented inventions, where the technical effects should be clearly presented.
Due to the experience and special expertise of Müller Schupfner & Partner, also in the field of computer-implemented inventions, we are able to protect even technically highly complex inventions for the client in such a way that he can always position himself optimally and obtain the best possible protection for his ideas.
Dr. Christoph Heinemann, Christian Kröner