T 0002/83 - Problem-inventions / The "could-would" approach - #11

Citation rank: 11
No. of citations: 216

T 2/83 is known for two things: firstly, it confirmed that "problem inventions" exist, i.e., inventions that are based on the finding of a previously unrecognised technical problem, and which inventions involve an inventive step even though the solution to the problem appears obvious once the technical problem is formulated (Headnote I). Secondly, T 2/83 created the so-called "could-would" approach, which approach is used in the final step of the problem-solution approach, namely in the assessment of whether the solution to a technical problem proposed by a patent claim is obvious in view of the prior art.

Claim 1 under dispute related to a tablet containing simethicone and an antacid, the tablet comprising a first volume portion containing the simethicone on a solid carrier and a second volume portion containing said antacid. The claim further defined that the tablet had "barrier means" between the first and second volume portions for maintaining the simethicone in the first volume portion and out of contact with the antacid in the second volume portion, and for preventing migration of ingredients from one volume portion to another.

The applicant argued that, although it was known that simethicone may be readily released when adsorbed on a lactose filler material, its release turned out to be retarded or prevented when the material is contiguous to the antacid component. It appeared that simethicone migrates, against all expectations, from the adsorbed state into the solid antacid layer and becomes absorbed therein. Once this unknown problem has been discovered, the claimed solution (i.e., providing "barrier means" to prevent migration of components from one volume portion to another) was trivial.

The Board generally agreed. They confirmed that

"[t]he discovery of a yet unrecognised problem may, in certain circumstances, give rise to patentable subject- matter in spite of the fact that the claimed solution is retrospectively trivial and in itself obvious ("problem inventions")." (point 6 of the reasons)

They also agreed that the problem of migration of semeticone from one volume portion of the tablet to another was previously unrecognised. Regarding the question of whether the proposed solution to the technical problem proposed by the invention was obvious, the Board stated:

"The question regarding the inventive step, in relation to the modification of the layered tablet of the state of the art as suggested by the present applicants, is not whether the skilled man could have inserted a barrier between the layers but whether he would have done so in expectation of some improvement or advantage." (point 7 of the reasons; emphasis added)

In view of the fact that, in the underlying case, the problem of migration between volume portions of the tablet was previously not recognised as a problem, the skilled person could have introduced a barrier layer, but he did not have an incitement to do so. Hence, while the skilled person could have introduced the barrier layer, he would not necessarily have done so.

The Board concluded that claim 1 was based on inventive step.

The "could-would" approach is nowadays routinely applied in the assessment of inventive step by all instances of the EPO (see, e.g., Guidelines 2018, VII, 5.3).

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Headnote:

I. The discovery of an unrecognised problem may in certain circumstances give rise to patentable subject-matter in spite of the fact that the claimed solution is retrospectively trivial and in itself obvious ("problem-inventions").
II. In a case where the applicant had supplemented a known layered tablet by the provision of a barrier between the layers, the Board held that the proper question to be asked was not whether the skilled man could have provided the barrier but whether he would have done so in expectation of some improvement or advantage.

The full text of the decision can be found here.