Posted on 22/4/2020

‘Notorious’ prior art divides EPO Board of Appeal and Examining Division over computer-implemented invention

The EPO Board of Appeal has overturned a decision by the Examining division.

A recent Board of Appeal decision overturned a decision by the Examining division to refuse a European patent application on the basis of ‘notorious’ prior art that it stated could not be reasonably contested.

The patent application (EP2511863) related to the tracking of personal belongings such as a wallet or backpack, termed satellite devices.  The application provided a computer-implemented method for tracking satellite devices via a wireless local area network (WLAN). This allowed the user to be automatically notified if a satellite device is not near the mother device, such as if it gets lost or stolen.

In the Examining division’s opinion, the closest prior art to the invention was a group of portable devices communicating by WLAN.  It argued that this feature was notoriously present on a wide variety of electronic devices at the priority date and as such, no search for documentary evidence of this prior art was necessary.

This objection, based on ‘notorious’ prior art, has been developed by case law of the Boards of Appeal and is available where a feature indisputably forms part of the common general knowledge, read more on this here.

The Examining division also decided that other features of the claimed invention were non-technical in character and were effectively equivalent to a parent’s surveillance of their offspring or a person’s tracking of their belongings.  As such, the application was initially refused.

The applicant appealed this decision to the Technical Board of Appeal on the basis that the claim had technical character and that the features of the invention were not common general knowledge.  In their decision, the Board did not agree with the Examining division’s handling of the case as they believed the term ‘notorious’ may have been interpreted too broadly.  Furthermore, the applicant had challenged the ‘notorious’ prior art, but the division had refused to provide evidence of the notoriety of the prior art.  However, as established in a previous decision, if notoriety is disputed, evidence of it must be provided.

In addition, the Board was of the view that the invention did have technical character.  As such, the Board remitted the application back the Examining division so that a full search and examination of the technical features could be performed.

This decision demonstrates that the Board of Appeal is willing to clamp down on Examining division decisions that do not provide a complete and reasoned ground for refusal.  This shows how appeals can be used effectively to overcome certain decision to refuse a European patent application.  However, given the complex nature of patent law and appeal proceedings, it is always best to use a professional representative.

If you have any questions on this topic or patents in general, please get in touch and our experienced patent attorneys will be happy to help.

Wilson Gunn