No. 82 - June 17, 2025

EPO Board of Appeal

Timan Pfrang
Tilman Pfrang, LL.M.
Patent Attorney, Dipl.-Phys.

EPO Board of Appeal says any “close” prior art as starting point will do as long as it is a realistic one – a friendly handshake with the UPC’s Local Division in Munich?

T 2554/22 – Technical Board of Appeal 3.3.10, oral proceedings 6 February 2025, written decision notified on 17 March 2025

Decision T 2554/22 is no game-changer at the EPO, but it is a neat illustration of a “quiet” shift already under way at the Boards of Appeal – at least in my opinion. The panel makes it plain that inventive-step analysis need not revolve around locating the one “closest” prior art. What matters is whether the citation relied on is a realistic starting point. Several such “close” documents may coexist, and obviousness can be tested from each of them. The language echoes the Munich Local Division’s recent remarks in UPC_CFI_501/2023 where the LD Munich firmly endorsed the application of the problem solution approach in UPC proceedings.

The Board’s reasoning

With respect to inventive step, the Board did not deny that in case of several "close" prior art documents a skilled person may have used any of them as a starting point and it may be necessary to assess inventive step from multiple angles. However, in the present case a skilled person addressing the problem of the patent would not have started from D1, but from D7. In this sense, in the present situation D1 was not considered to be a "realistic starting point".

Why this matters for UPC practice

Only a few weeks ago the Munich Local Division, in its decision of 4 April 2025 (UPC_CFI_501/2023) – analysed in one of our previous posts (blog no. 72) – made headlines by stating that the UPC will “primarily” adopt the EPO’s problem-solution approach. The Board of Appeal in T 2554/22 now delivers much the same message from the EPO side of the fence. By accepting several equally plausible starting documents and insisting that obviousness can be shown from each of them, the Board underlines that the PSA is a pragmatic tool, not a contest for finding the closest prior art. 

Takeaways

  • The Board confirms that inventive-step analysis may start from any realistic starting point; there can be more than one “close” prior art.
  • Where several “close” starting points exist, an obviousness attack can be brought (and succeed) from each of them; arguing that another citation might be nearer is not enough.
  • This mirrors the stance of the Munich Local Division in UPC_CFI_501/2023 (covered in our previous blog no. 72), which declared the EPO’s problem-solution approach the guiding framework for UPC cases while rejecting formalism about the closest prior art.
  • EPO and UPC practice seem to converge: substance over semantics, pragmatism over formalism.