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Tuesday, 8 September 2015

Why is ‘reasonable expectation of success’ so tricky? Predictability, empiricism and the effect of time

You can't keep a good Kat down, and that includes our guest Kats. Even once they step back from the team, their brains keep on ticking and they are super-sensitive to the sort of issues that make readers respond.  That's why the IPKat and Merpel are so pleased to welcome this surprise and quite out-of-the-blue guest post from recent guest Kat Suleman Ali, a man who has done some deeper thinking on the significance and future prospect of a patent litigation episode that is now too old for news but still fresh for full appreciation. This is what Suleman writes:

The Court of Appeal of England and Wales, in Teva UK Ltd & Another v Leo Pharma A/S [2015] EWCA Civ 779 (see Katpost here), has recently reversed a finding of obviousness by Mr Justice Birss at first instance ([2014] EWHC 3096 (Pat), see Katpost here). This is a tale of the evaluation of ‘expectation of success’ as part of inventive step analysis having gone wrong in a pharma setting. This post is about trying to discover why ‘expectation of success’ can be so difficult to judge.

Different types of ‘mistakes’ and why decisions need to be reversed

Fergus thought he was wrong ...
but he was mistaken
I think it is important to look carefully at mistakes in judgments on patent cases, and also the corresponding corrections in appeal. The apparent ‘mistake’ can unmask misunderstandings, contradictions, biases, subtleties and nuances that are normally hidden. The Courts of England and Wales have a long tradition of high quality judgments in patent cases, are able to understand the scientific and legal complexity and are able to derive and apply the appropriate legal tests. Our judges have many years of experience and are undoubtedly hard working and brilliant at what they do. Inventive step is not an obscure or rare legal concept. So, why did it go wrong here?

I would say that sometimes judgments that have to be reversed are not ‘mistakes’ in the sense of an error of judgment. They can instead be decisions that need to be reversed because they don’t fit into the wider aspects of how difficult we want it to be to get patents and the extent to which we want to follow the case law and practice of the European Patent Office (EPO).

Mr Justice Birss on the ‘judicial balance between predictability and discretion’

Here is a quote from a recent Katpost on what Mr Justice Birss said at the GFIP conference:
‘Mr Justice Birss was of the view that IP cases are characterized by three particular features: (i) many cases have an international aspect: (ii) often they are technologically complex; and (iii) IP cases tend to be high profile. Against this backdrop, he considered how to achieve a judicial balance between predictability and discretion in reaching the “right” result. He highlighted how this balancing can lead to decisions favouring one over the other by referring to the recent US Supreme Court case in the Kimble Spiderman dispute [on which see the AmeriKat here] and the UK Supreme Court decision in Virgin [noted by the IPKat here]. In Kimble [see here for this Kat’s view of that case], predictability was preferred, while in Virgin the court overruled 100 years of precedent. Mr Justice Birss suggested that it was difficult to reconcile these two results (although he also admonished the audience to remember that nothing said in his presentation in any manner would bind him when called up to render judgment in a given case).’
It is clear that Mr Justice Birss is well aware of the different tensions that are in place when deciding a case. Case law must deliver predictability, but individual decisions must be ‘right’.

Predictability as part of inventive step

In technology areas where the invention concerns the property or activity of a molecule then whether or not that property or activity can be used to ‘solve the problem’ can be an important part of the inventive step analysis. In the chemical, pharma and biotech sciences there are a lot of known general principles about molecules that seem to go wrong in specific situations, i.e. it should have cured the patient’s flu, but it was too toxic. As a consequence being able to predict whether something will work has become an important part of inventive step.

This is normally analysed as the level of ‘expectation of success’ that would be present. This concept is important in Europe (see here) and the US (see here). As an aside it is interesting to note that predictability of outcome was seen as important to obviousness analysis in the pivotal US Supreme Court decision KSR v Teleflex on inventive step (see here).

The empirical approach as one type of research

There are different types of invention:  there are ground breaking inventions, for example where new molecules are created for the first time or new phenomena are discovered; and there are incremental inventions, for example where we take a known molecule or phenomenon and apply it to a new situation. The patent system rewards all these inventions equally in terms of the length of the monopoly given. In the pharma field the initial ground breaking invention might be discovery of a drug that treats a particular condition, and then incremental inventions concern using the drug to treat other conditions, and then providing new formulations of the drug to treat those same conditions. 
Some types of research are clearly more difficult than others. If we take the example of empirical approaches, i.e. where tests are needed to discover whether drugs have the desired properties, certain inventions might be achieved using a known drug tested with a known assay. Others require the discovering of a new molecule and the setting up of a new assay. It is clear that with empirical approaches the ‘difficulty’ of testing might vary tremendously, even though predicting which drugs will pass the test may be equally difficult.

Should expectation of success always be part of inventive step analysis?

We’re at a point in case law where it is probably not acceptable to question whether expectation of success should be part of inventive step analysis in situations where an empirical approach is used. However, arguably the ‘ease’ of testing should impact the expectation of success test. Expectation of success is asked as a very specific question dependent on the factual situation, i.e. what was the expectation that this effect with this substance would have been achieved? In the relevant art it might be a routine and straightforward matter to test thousands of compounds from a library in a test which is easy to perform, and where no real thought is given to why each individual compound is tested, i.e. all available compounds are simply put through the test process. However this fact is not relevant to ‘expectation of success’ because the question is simply asked for the individual compound that passes the test.

In his decision Mr Justice Birss arrived at the concept of the ‘skilled formulator’ that would test compounds that they were not familiar with which might not have been expected to work. In such a situation one could argue that ‘expectation of success’ is not relevant because it would be the norm to test compounds with a very low expectation of success. However the Court of Appeal did not delve into such nuances and simply viewed ‘expectation of success’ needing to be looked at based on the predictability of whether that specific substance would be found to have that particular property.

Different types of pharma inventions

As mentioned above, there are pharma inventions that are based on new molecules where non-routine approaches will often need to be applied, and then there are incremental inventions that take known drugs and use them in new ways. Here Mr Justice Birss was faced with an incremental invention, which was based on a new formulation for a known drug, in this case a ‘combination’ product. He may have reflected on the fact the decision would be adding to the case law on how we judge such inventions and the circumstances in which a combination product would be inventive. He may have felt that combination product inventions are less difficult to achieve than other types of pharma inventions. However, there is also the unwritten rule that patents need to be granted for whatever is being developed in a particular technology field, and at the moment many combination products are being developed in the pharma field.

What is the inventive step test for pharma situations?

In the present case Mr Justice Birss noted:
‘In Conor v Angiotech [2008] UKHL 49, [2008] RPC 28 the House of Lords considered the issue of obviousness. There Lord Hoffmann (with whom the others of their Lordships agreed) approved the following statement of Kitchin J made in Generics v Lundbeck [2007] RPC 32:

"The question of obviousness must be considered on the facts of each case. The court must consider the weight to be attached to any particular factor in the light of all the relevant circumstances. These may include such matters as the motive to find a solution to the problem the patent addresses, the number and extent of the possible avenues of research, the effort involved in pursuing them and the expectation of success."’
While this is an all-embracing statement it does not provide much guidance about how all the different factors need to be applied to a specific situation. Further it is silent on the issues of not disrupting the predictability of case law, not coming to a finding that will render all patents in that field invalid, and keeping in line with EPO case law. The statement reduces inventive step to a case by case determination, which makes it harder for case law to develop, and is also a form of resignation that more specific guidance cannot be developed. I would say the fact that the Court of Appeal had to reverse a finding of inventive step in the present case is evidence of the failure of the present test.
Time and pharma situations 
Time is a funny thing ...
Time is a funny thing when it comes to pharma inventions because often a lot more comes to be known about the invention over the patent lifetime. At the point of examination before a Patent Office there will be a few relevant prior art documents and some data from experiments on cells or possibly even an animal model. Based on that inventive step and sufficiency will be examined, and a certain scope of claim will be granted that takes into account the extent to which one could expect different embodiments to work, i.e. the extent to which the technical effect can be extrapolated in view of scientific assumptions. Many years later (for example when litigation happens) the relevant compound will have been shown to be superior to thousands of others in many assays and in clinical trials. The compound may also have been discovered to be non-effective in certain classes of patients (such as children), apparently making the claim insufficient in respect of those patients. 
How does the Court look at all of this? Inevitably all that is known about the invention will be somehow taken into account when judging validity. However that means that there will no one date at which the invention is judged, and some very relevant facts will only come to light many years after the filing date. 
So how do we look at ‘expectation of success’? 
Coming back to the present case it must be recognised that it is possible to look at two different ‘expectations’ as part of the test. One can look at the situation before the test is performed and ask ‘do I expect this to pass the test?’, and one can also look at the situation where the drug has passed the test and ask ‘looking at the drug that passed the test, am I surprised that it passed the test?’ 
Having come to the conclusion that the skilled formulator was open to testing unfamiliar compounds Mr Justice Birss might have thought about expectation of success in this latter way. There is a certain logic to this. If it was inevitable that a drug was going to be tested in the art shouldn’t the expectation of success question reflect this, and be more about being surprised at the results of the test rather than being able to predict the outcome of the test. Even if Mr Justice Birss had thought along these lines he might not have wanted to explicitly say it as a lower court could not possibly change the expectation of success test in this way. That would be the job of the UK Supreme Court. 
So what did the Court of Appeal decision really do? 
The Court of Appeal decision reads like the correction a simple error. It does not question the appropriateness of the expectation of success test, and whether it needs to be asked differently in different situations. For now, it is accepted that expectation of success is about whether one could predict the results of the test. Whether or not the testing was routine and that thousands of compounds could be easily tested is not relevant. That decision does make things more certain and serves the pharma industry well where empirical testing is the basis of many inventions. I suspect Mr Justice Birss is ahead of his time in reconsidering expectation of success, but perhaps one day when as a UK Supreme Court judge he banishes this test from patent case law historians will look back in time to see that it all started with Teva v Leo


Old Man said...

The notion of expectation of success as exemplified in the blog, reminds of a new way of assessing inventive step adopted by some Boards of Appeal of the EPO, mainly in chemistry, as for instance Board 3.3.05.
Instead of the classical 3 step approach
- Closest Prior art-differences-problem and solution
it follows a 6 step approach
Object of the invention-Closest prior art-Technical problem (in general the problem meant to be solved in the invention)-Solution proposed-Success of the solution-reformulation of the problem-Decision on obviousness. See for instance T 119/12,
T 967/12 or T 168/11.

Cass said...

It might be better to view certain situations where many compounds could be tested more like selection inventions. The test would then include comparing the compound to others that could have been chosen. That might reflect better how the invention was made.

Suleman Ali said...

Old Man, if I understand the 6 step approach correctly, it essentially takes into account all newly discovered advantages and disadvantages. That sounds 'just', but I think would be a bit too radical for the UK Courts that are still in the process of coping with the 3 step problem solution. How subseqently discovered advantages and disadvantages play into inventive step does raise compex issues though, and whilst I've not read the 3 cases you mention there must be differences between forseeable and unforseeable advantages/disadvantages

three-stepper said...

Old Man,

I never quite followed the six-step approach. It seems to me that the extra steps are warranted because the problem was not formulated correctly in the first place. If the invention provides an effect over the whole scope of the claim, then achieving this effect becomes your problem to be solved. If an effect is not established, or if it is only established for a part of the claim, then the problem is to provide an alternative. Why formulate the problem more ambitiously than is warranted, only to return and reformulate it all over again in view of information that you were already aware of the first time round?

Or have I got this all wrong?

MaxDrei said...

I'm bemused by the suggestion from "Old Man" that the approach to Art 56 EPC taken in the three recent T Decisions he cites is something "new". All three T Decisions exhibit reasoning on Art 56 which, for me, is "Straight Down the Line" EPO-PSA as practised within DG3 since forever and a day.

But hey, I'm not a chemist. Did the Chemical Boards until recently do EPO-PSA differently from the engineers?

MaxDrei said...

I must assume that both Old Man and 3-Stepper are People, like me, who have not studied for, and passed the EPO's Qualifying Examination to practise before the EPO as European Patent Attorneys.

In the application as filed, we find the subjective problem attacked by the Inventor. Full faith and credit is given, by EPO-PSA, to the inventor's statement of field and problem. It is (at least in engineering fields) what fixes the "realistic starting point" within the field of the invention.

But sometimes the EPO search results blow the inventor away. And apart from that, we all want to do obviousness objectively, relative to the notional PHOSITA, rather than subjectively, relative to the named inventor.

Hence the Approach now dubbed 6 steps. But this has always been the Approach, since 1978.

Peter Bonetti said...

The "looking back" approach would render everything obvious apart from things that were positively expected NOT to work. That can't be right.

three-stepper said...

Referring to Old Man's 6 steps:
"Object of the invention-Closest prior art-Technical problem (in general the problem meant to be solved in the invention)-Solution proposed-Success of the solution-reformulation of the problem-Decision on obviousness."

In my view, the object of the invention helps to determine the closest prior art. I suppose you can count this as one or two steps.

Based on the distinguishing feature(s), any technical effect that has been established and is to be relied upon for the objective technical problem must be something already derivable from the application as filed. Further, it must be plausible from the original disclosure that that effect can indeed be achieved. No effect, or only an effect over a part of the claim, then the problem is to provide an alternative. You can count this as one or multiple steps if you like.

Max Drei, can you exlain why you would formulate the problem more ambitiously than warrants only to return and reformulate it using the same information that you had access to the first time round.

Decision as to obviousness. Last and third (?) step.

MaxDrei said...

Stepper, I always contend that getting the hang of EPO-PSA is like learning to ride a bike. Once you have cracked it, you wonder problem to get the hang of it. But until you have cracked it, you find it hard to do it smoothly.

You seem to have it wrapped all round your neck there Step. And with my poor credentials, I'm hardly the best person to teach you EPO-PSA from first principles.

But anyway, note from the Decisions that Old Man cites, that one of the essential minimum number of steps is to check that the claimed combination of tech features does actually solve the problem that is being prayed in aid of patentability. If not, well then, the Approach decrees that you must re-formulate, to a problem that is actually solved by the combination of features in the claim.

Either that, or switch to an amended claim ie an Auxiliary Request.

Suleman Ali said...

MaxDrei and everyone else who wishes to comment, I thought I would ask your views on the situation that I describe in the post where a new compound is found after the filing date to be superior to thousands of other compounds in assays relating to its use in therapy. If this is not foreshadowed in the specification itself do you think a Court should take it into account when assessing inventive step?

Proof of the pudding said...

Suleman - would not the SOLE relevant question in your hypothetical situation be what was known prior to the filing date?

If, based upon prior knowledge and prejudices, a person of ordinary skill in the art WOULD have made and tested the compound AND have (reasonably) expected it to work, then the compound is obvious. I do not see how later publications that change the mindset of those skilled in the art could possibly make any difference to this assessment.

As pointed out in T1329/04, the assessment of inventive step does not change with time. To my mind, this means that the assessment of inventive step does not change even if the initial perceptions and assumptions of the person skilled in the art are later proven to be "wrong".

With regard to a technical effect that is not "foreshadowed" in the application as filed, I think that the EPO case law upon reformulation of the objective technical problem deals with this point adequately. If there really is nothing in your application that remotely renders the "new" effect plausible, then you are facing an uphill struggle!

XN77 said...

Chairman Raths of Board 3.3.05 may be using the approach he has outlined in EPI 2/2014, page 68 (realizing this is stating the obvious). Mr. Raths for some reason does not like identifying the distinguishing features first and determining their technical effect thereafter, as is conventional. Possibly, it has to do with the DE approach traditionally being more problem-based while the EPO PSA is more effects-based (if I recall correctly). In addition, the approach of Mr. Raths seems to bind the patentee/applicatn more strongly to the problem initially mentioned in the application and to avoid the argument that the claim also provides a minor surprising advantage (the cases where it was obvious to add X to known coating to make it stronger, but surprising also found that it gives better shelf life).
For Paper C, a simple 10 step PSA is commonly taught and used (see eg., which basically gives structure to the conventional third step "was it obvious".

When time goes backwards said...

Proof of the pudding, I'm not sure T1329/04 is in fashion any more as we never seem to hear about plausibility. However this represents an interesting situation where loss of the priority date would possibly make the claims more inventive.

The logic of what you says follows through, but the idea of prior art and the filing date was meant to be about the invention having to be better than what was known, rather than penalising the applicant for information that came to light after filing.

MaxDrei said...

Frankly, I think the Conor case is a good one for debating when subject matter has to be seen as "obvious". In Conor, the Supreme Court over-ruled very experienced patents judges in the courts below, to find the claim to a Taxol-coated stent inventive.

The following is pulled out of memory, without checking. The facts I recite about the Conor case are how I remember them. Do not trust them absolutely though. Memories can play tricks.

In the application as filed, the teaching was to apply an anti-angiogenic coating to a stent. The only substance individualised by tests reported in the application as filed was Taxol. Those test results were just about sufficient to render it "plausible" that Taxol would work (but also that any other anti-angiogenic agent would "work").

The prior art included a teaching to coat a stent with an anti-angiogenic substance, but lacked the results of tests with Taxol.

The claim in suit was to a stent coated with Taxol.

Did the Applicant "select" (in the patent law sense) Taxol, out of all anti-angiogenic agents. Nowhere did Applicant express a preference for Taxol over any others. Nowhere did he surmise that Taxol might work better than all the other agents, in any respect whatsoever. In the application as filed, there was no problem that was solved by Taxol but not by the other members of the genus of anti-angiogenic agents.

But he did do some in vitro tests on Taxol, and he did report the results of those tests in the application as filed.

And for the HL, that was enough. Keep in mind though, that by the time the case got to the House of Lords, the "Taxol coated stent" was a blockbuster product. Politically tricky then, to say that the patent on it in England must be revoked as obvious. I know "the court does not shrink....." and all that jazz. But nevertheless....

Me, I remain a sceptic. I think I'm with the wise old patents judges in the lower courts (even though they are steadfast in their rejection of EPO-PSA as the way to explore obviousness). That is why, for me, Conor is an instructive case.

Anonymous said...

Max, and also from memory, I seem to recall that the parties had settled before the case got to the Supreme Court, which may have colored the thinking of the judges.

H. Bosch

Suleman Ali said...

MaxDrei, in the UK many patent attorneys found Conor v Angiotech ( close to ridiculous. However the parties had settled by then and I think the House of Lords decided to use the case to indicate certain principles:
- the Courts must try to find ways of finding some biotech/pharm patents valid
- obvious to 'test' is not the same as obvious to try
- we need to pay some deference to EPO approaches to inventive step
- plausibility (i.e. the quality of the information and data in the spec) is a low hurdle.

MaxDrei said...

Thank you both. Even as I was typing my last post, I was wondering how it could happen, under the EPO Problem and Solution Approach, that the Taxol-coated stent claim survived testing of its validity at the EPO. Did D1 Wolff only appear later, after the ship set sail from its EPO shipyard, so the EPO never had it as their "prior art starting point". Or was it that Wollf was Art 54(3) art only?

Suleman Ali you use the word "ridiculous". I hope that does not doom the entire EPO-PSA analysis of obviousness to a dismissal as "ridiculous". Are the Chemical Boards executing EPO-PSA currently somewhat more adroitly than was the case in the past?

With thousands of Decisions coming out of DG3 every year, and no Binding Precedent, I think EPO caselaw evolves gradually, with touches on the tiller from the EBA, as and when necessary. That works well for fixing what is "technical" and what is not. When it comes to obviousness though, could it be that no touches on the tiller are needed at the EPO but are needed in those national jurisdictions not yet on board with the "settled caselaw" of the EPO on Art 56 EPC?

MaxDrei said...

One more thought, prompted by SA's comment that "plausible" is an easy test to pass.

Up to 1978 the UK did not examine obviousness prior to grant. The Section of the statute on Patent Office Opposition, Section 14 of the 49 Act, required the Opponent to prove "clearly obvious". At court, the burden was just "obvious". It was easier to get a claim struck down for obviousness in the Courts than at the Patent Office. The Inventor with a 50:50 case, ploughing through the Office, should be able to "have his day in court" it was thought. Thought, I suppose, because testing obviousness depended on witness evidence, rigorously tested by X-examination.

Meanwhile, over in the USA, they had another way to give the Inventor at least one day in court. Claims, once duly issued, could only be found obvious by the court if the evidence was "clear and convincing". So, at court, a higher hurdle for the attacker than the lower one operating at the USPTO.

Now to the EPO. Should its obviousness test be lower than, higher than, or the same as that imposed on claims by the courts in England? Me, I think obviousness should be done everywhere by the same EPO-PSA Analysis. Of course, the higher the value of the case, the more resources the parties will throw at the issue and the more rigorously it will be executed. EPO-PSA can cope with that.

Readers, what do you think?

Suleman Ali said...

MaxDrei, I know you are quite strict on using problem solution in the way the EPO does, but as I mention in the post I believe there is also an unwritten rule that Patent Offices and Courts need to find ways of granting and maintaining patents that reflect the inventions and research work that is happening in a given field. So we adjust the inventive step hurdle as needed to make sure a certain proportion are found to be inventive. That is very possible to do in pharma/biotech as one becomes more generous in accepting arguments on surprising effects, reasons it would not have worked etc. Courts find it harder to do as they just don't have enough cases going through the system to judge what is fair and comparable to other patent cases. Conor v Angiotech was a case of senior judges nudging the sytem to be more lenient. Once the system has decided to become more lenient that feeds through to the tests we use and the way we use them, and these 'modified' tests allow predictability for others for future cases. I don't disagree on you giving primacy to EPO-PSA, but I do think there are many factors in reality to the way the it is used in pharma/biotech which must be acknowledged to make sense of what happens at the Courts.

SoMeWhErE said...

This blogpost says the patent system gives all inventions an equal monopoly time (groundbreaking and incremental). That is not really true. SPC's are more likely to be available for new drugs rather then new uses of known drugs, at least that is how the CJEU sees it.

Old Man said...

I never thought that my original comment would trigger such a number of replies.
I never wanted to quote one particular chairman, but indeed it came originally from this Chamber. I find it myself a bit odd, as do some members of other Boards.
as the PSA in not part of the EPC, the courts should be free to take any way in order to decide on IS. before the PSA became the standard way at EPO to assess IS, the notions of surprising advantage and unexpected effect played an important role in deciding upon the he presence or the absence of IS. Decisions could be taken even without PSA.
As for the EQE candidates, the classical three step approach is the only correct one.
It will be interesting to see what the UPC will do. Will it adopt the PSA or go its own way?

maxdrei said...

Should courts follow EPO PSA? Well, it is the EPO's established caselaw, and some court or other did once say that it ought to follow it unless the commodore was steering the convoy onto the rocks.

Ron said...

I have always thought it ironic that, whereas the UK courts feel obliged to follow EPO precedent case law, the EPO itself does not. A representative example of the EPO's view is found in T0910/06

where the Board said

"...unlike some Anglo-Saxon legal systems which are precedent driven the instances of the European Patent Organisation work within a codified system of law, i.e. the European Patent Convention and its implementing regulations, and are constrained by case law only in the case of decisions handed down by the Enlarged Board of Appeal. Further the ratio descendi of a decision of a Board of Appeal is only binding, in the case of remittal, on the department whose decision was appealed in so far as the facts are the same (Art 111(2) EPC). " [Reasons, 2.8]

Suleman Ali said...

In response to Ron, I think the one advantage the EPO has over the UK Courts is the sheer numbers of cases they look at. So UK case law can benefit from that. The UK can choose the extent to which they follow EPO case law, and for certain things, like added matter, the UK has its own tests. However I would also add that whilst the UK Courts have to choose how to 'harmonise' with the EPO, they also need to harmonise with the UK IPO which seems very lenient on inventive step in comparison to the Courts. There is a huge gap there, which perhaps does not matter because so many UK patents are EPO-derived.

I think an important point is that if patentees have had to obtain patents by passing EPO patentability requirements, they should not be disadvantaged by the UK Courts having their own requirements. That means that the UK Courts must to an extent make sure they are in sync with the EPO on the main issues.

THE US anon said...

Dr. Ali,

I have a fundamental problem with your view, so expressed at 10:56: sovereignty.

The EPO is NOT a sovereign ABOVE true sovereigns of individual nations.

No matter how "convenient" you may find it having a "One World Order," we in fact do not have such a thing, and until we do, we MUST respect the individual nation sovereignty.

Anonymous said...

USanon, have you read the UPC agreement recently?


Old Man said...

I would like to draw Max Drei's attention to the fact that the PSA has not existed since 1978. The PSA is a creation of case law in the early 90s, and started in chemistry. It later diffused in other technical areas to become the standard way to decide upon IS.
It is true that no candidate to the EQE will ever be successful if he does not use the PSA when arguing in favour of IS in Paper B, and against IS in Paper C. But what is required is the "Classical" 3 step PSA and not the 6 step PSA as promoted presently in chemistry.
Max Drei when correctly applying the 3 step PSA the question of the success of the solution never arises.
I fully understand Ali's position that the Courts might better be in sync with the EPO, but after what matters is to have consistency.

Anonymous said...

T 24/81 dates from 1982.


MaxDrei said...

On EPO-PSA, simply astonishing from Old Man, and much appreciated from EdT. I had always understood that i) EPO-PSA was worked out by DG3(or was it David Cadman?) while waiting for the first appeal cases to work their way through, following the EPO opening for business in 1978 and ii) chemistry at first went their own way. EdT points out that T 24/1982 is a very early Decision, which I think tends to support my memory on this.

EPO-PSA is less easy to apply to chemistry, because of the difficulty of fixing the prior art starting point for a claim to "Molecule X". Perhaps that is why the chemical Boards were late boarding the bandwaggon?

As to 3 steps vs 6, I had thought it was always part of the analysis, from the start, to check that the problem was solved. See the classic Paper on EPO-PSA, in an early issue of EPI. The author, was it Teschemacher or was it Georg Szabo?

THE US anon said...


Shall I remind you that at least here in the States, treaties are NOT self-enacting laws?

plu said...

I would rather much appreciate if you could expand a bit more on the history of the PSA. I understand it was first set out by Szabo in EIPR 1986, 293; and some further articles up to about 1995. Regarding T 24/81, it does not seem to expressly involve the step of selecting the closest prior art. The difference with the earlier German approach is that the EPO approach is effects-based. Though this was all way before my time. Though to some extent there may be no contradiction, the DG3 may have developed and perfected the PSA as internal tool in the period 1978-1985.

Anonymous said...

If you read the paper by G. Knesch(EPO) in epi information 3/1994, pp 95-98, his opinion was that T24/81 did describe the three stages of the PSA. For a history, you could read the paper by George Szabo in IIC 4/1995, pp 457-487. He refers to his earlier work 1986 EIPR 293-303.


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