Euro Patent Office | Ex-post facto analysis with benefit of hindsight knowledge of invention not a correct approach to decide patent application

Boards of Appeal of the European Patent Office: A Bench of B. Stolz, Chairman and M.R. Vega Laso and J. Geschwind, members allowed the appeal filed against the decision of the Examining Division whereby the appellant’s application for European Patent with the title, “Non-destructive procedure for the isolation of DNA from plants” was rejected.

In the decision under appeal, the Examining Division found that the subject-matter of the claims, then on file, did not involve an inventive step. It may be noted that the appellant replaced the main claims with a set of new claims.

Article 123 of the European Patent Convention (amendment and added matter)

In regard to the new set of claims, the Board held that the amendments did not raise any issue which the board could not reasonably be expected to deal with without adjournment of the oral proceedings. As far as the added matter was concerned, it was held that the subject-matter of the amended claims did not extend beyond the content of the application filed. Thus, Article 123(2) of the Convention was complied with.

Article 56 (inventive step)

The claimed invention related to a method for screening plant populations obtained during plant breeding in order to select desired genetic variants. According to the appellants, their invention reduces the required effort and allows screening of large plant populations with high efficiency. The Board perused document 6 as submitted on record, as the closest state of the art. The document described a protocol for the isolation of high-molecular-weight of DNA from dry roots of medicinal plant Berberis Lycium. After a lengthy discussion on the appellant’s claim, an inventive step over Document 6 read by a skilled person in the light of the common general knowledge in the art was acknowledged. Similarly, taking Document 7 as the closest state of art, it was held that the claimed method involved an inventive step. The approach of the Examining Division was a result of an ex-post facto analysis with the benefit of hindsight knowledge of the invention.

In such view of the matter, the Board directed the Examining Division to grant the patent on the basis of the claims filed as a main request during the oral proceedings and a description to be adapted thereto. [Rijk Zwaan Zaadteelt en Zaadhandel B.V., In re, T 1985/12-3.3.08, dated 13-07-2018]

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