In a recent EPO Board of Appeal decision, T 2517/11, the Board
has reaffirmed that for a feature to be deemed disclosed in a
document, it is not necessary for the feature to be readily
apparent on reading the document only once. Furthermore, the
skilled person does not need to have specific motivation to
investigate the existence of a "hidden" technical feature
in the prior art.
In the case in question, Orange had applied for a patent for a
method of transform-based coding/decoding of digital signals. The
Examining Division had refused the application on the ground of
lack of inventive step under Article 56 EPC.
Orange appealed the decision of the Examining Division, arguing
that one of the features of the prior art on which the Examining
Division had based their objections could only be determined after
mathematical analysis and not solely from reading the text of the
disclosure. In particular, the appellant argued that the skilled
person would not be motivated to investigate a so-called
"hidden" feature of the prior art and hence it would not
be obvious to develop the prior art in order to arrive at the
The appellant further submitted that the Examining Division had
misinterpreted the disclosure of one of the prior-art documents. In
particular, the Examining Division had taken the statement "if
the analysis window is restricted to be symmetrical..." to be
an explicit indication to the skilled person to consider both
symmetrical and asymmetrical coding windows. However, the appellant
argued that the context in which the statement was used made it
clear that it was only intended as a simplifying condition to
enable a mathematical calculation to be performed, and not a
disclosure of the option of using asymmetrical analysis
In its decision, the Board referred to Enlarged Board decision G
1/92, which set out that, in relation to Article 54(2) EPC,
"it is the fact that direct and unambiguous access to some
particular information is possible, which makes the latter
available, whether or not there is any reason for looking for
The Board held that this test for disclosure was also relevant
in the case of the claimed method and reasoned that the fact that
the Examining Division was able to prove the existence of the
particular "hidden" technical feature by mathematical
analysis was itself proof that the feature in question was
accessible and hence met the test for having been made
Despite its first line of argument being unsuccessful, the
appellant was able to convince the Board that the Examining
Division had misinterpreted the disclosure in one of documents
cited as prior art. Ultimately, the Board decided that the
application did involve an inventive step and the decision of the
Examining Division to refuse the application was overturned.
In summary, in T 2517/11, the Board has followed the precedent
set in G 1/92 with regard to disclosure in the prior art, namely
that it is irrelevant whether there is any motivation to look for a
feature in the prior art when considering the question of whether
or not said feature is disclosed.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
Competitor pay per click campaigns where a company bids for the name of a rival in the hope that a customer or client who searches for a particular company will not notice when a similar company appears in the search suggestions.
As the public cloud services market continues to mature and grow, concentration of computing resources into cloud data centres is increasingly attracting the attention of NPEs as a target for patent litigation.
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).