Change of scenery

With the decision 133 R 99/19k of the Higher Regional Court of Vienna dated January 21, 2020, the first instance revocation of the patent E 303 802 (Austrian part of EP 1 439 829 B1) was confirmed. In short, the proceedings concerned inventive step and the question of whether the use of a galenic formulation known for the predecessor Tramadol is patentable, i.e. has the necessary inventive step, in case Tramadol is replaced with Tapentadol. The patent owner argued that the inventive step of the patent in suit was to further develop the active ingredient Tapentadol in the direction of a prolonged release (PR) form. According to the problem-solution approach, a Tramadol PR patent would be the closest prior art because it has most of the solution elements in common with the claimed solution. We, on the other hand, believed that the closest prior art should be the patent publication concerning Tapentadol as such, which also mentions that Tapentadol was developed on the basis of Tramadol. Based on this document, the objective technical task of the patent in suit would be to provide a formulation that had to be applied only once within 12 hours. This task was also the subject of publication ./L, which concerned the provision of such a PR formulation for the active ingredient Tramadol. In our response to the appeal, we also referred to Section G VII.5.1 of the Examination Guidelines at the EPO, according to which in the event of a rejection or a revocation, it is sufficient to show based on one relevant state of the art that the subject matter of the claim does not involve the necessary inventive step. There is no need to discuss which document comes "closest" to the claimed invention, the only relevant question is whether the document one has chosen is a suitable starting point for assessing inventive step (see T 967/97, ​​T 558/00 , T 21/08, T 308/09 and T 1289/09). The Higher Regional Court of Vienna now agreed with us, denied the existence of an inventive step and said about the application of the "could-would-approach" and the problem-solution approach:

In order to effectively combat the assessment of evidence by the Nullity Department and the factual findings made by it, it is not sufficient to simply refer to individual pieces of evidence that are favorable for the appellant's procedural point of view and to demonstrate that conclusions other than those drawn by the nullity division would have been possible on the basis of the available evidence. Rather, it must be shown that the findings made are necessarily incorrect or at least that significantly more convincing evidence for other findings is available and the first instance court (the Nullity Department of the Austrian Patent Office, added) should have believed this and not other evidence.

This means that when it comes to the question of the existence of an inventive step, it is absolutely necessary for the patent proprietor to present the problem-solution approach chosen by the attacker as necessarily incorrect. Simply selecting a different closest prior art and using this as the starting point to argue for presence of an inventive step is not sufficient.