Notes from Daily Work: No Problem, no Solution – Pepper Sauce?

In recent time, quite some European Patent Applications have come across my desk which included descriptions of remarkable lengths and remarkably high number of drawing figures and focused to exhibit many ?embodiments“ of, well, something, with very few words about prior art and very few words, if any, relating to a problem to be solved, a solution provided, and advantages obtained with the solution. In such case, evaluating prior art cited against the application and developing arguments requires a preceding step of evaluating what the invention presumed to be in the application really is about. Eventually, a challenge.

The issue with the problem and the solution is not novel:

U. S. Patent 107,701 granted to Edmund McIlhenny by September 27, 1870, had been granted on an “Improvement in Pepper-Sauce” and includes not much more disclosure than a recipe for making the subject pepper sauce. A reference to prior art is a short and very general discussion about flavours of peppers of the Cayenne and Tabasco varieties, indicating Tabasco peppers to be as strong as Cayenne peppers but having a finer flavour than these. Flavours and tastes of pepper sauces made with peppers of these varieties are not specifically discussed. U. S. Patent 107,701 has long expired, however without the subject pepper sauce having disappeared from the markets - to my delight...

Recently, a kind of pepper sauce appears to have been brought into proceedings before the European Patent Office:

A Board of Appeals has handed down decision T 1520/19 which deals with an application identifying a technical problem only vaguely, failing to enable the skilled person to understand “which particular technical issue the claimed invention addresses” and “whether the claimed invention solves the only concretely disclosed technical problem, or in which circumstances or to what extent”. Given that, the Board concluded that the application violated a requirement laid down in Rule 42 (1) (c) EPC and calling for disclosure of an invention in such terms that the technical problem and its solution can be understood. The Board further concluded that the failure to meet the criterion of said Rule incurred a denial of involvement of an inventive step under Art. 56 EPC. In consequence, the Board dismissed applicant’s appeal, thereby confirming the application to be rejected.

The fact that the dismissal of the appeal is based not only on a violation of a formal requirement by Rule 42 EPC but on a consequential violation of Art. 56 EPC appears to make this decision pertinent not only for Examination Proceedings but also for Opposition Proceedings under Art. 100 (a) EPC and Invalidation Proceedings under Art. 138 (1) (a) EPC - although the opinions of the competent Opposition Divisions and courts in these regards remain to be given presently.

Most critical in the decision appears to be its emphasis on a deficiency in the application, not in applicant’s total submissions. Accordingly, a lack of specification in the application or patent itself may not be allowed to be amended or complemented by any submission during prosecution, opposition, or invalidation, inhibiting effect of any argument not supported by any indication in original disclosure.

My urgent recommendation to drafters of patent applications is to always include at least a few notes explicating what problem the invention is meant to solve and how the solution provides relief, supported by some evidence. If concern for insufficiency prevails during proceedings, the “last straw” might be to present an expert’s testimony about what the skilled person would learn from the given disclosure, and that such learning would be sufficient for identifying a proper problem and a proper solution. Good luck to everyone who dares to try, with my support, if requested. Feel free to call!?