The team is joined by Guest Kats Rosie Burbidge, Stephen Jones, Mathilde Pavis, and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Hayleigh Bosher, Tian Lu and Cecilia Sbrolli.

Monday, 18 September 2017

Conference Report: Zurich IP Retreat 2017 - Patents and Hindsight (Part II)

The second part of this conference report on the 2017 Zurich IP Retreat - Patents and Hindsight summarizes the panels on the closest prior art and the definition of the problem (to be solved). Part I of the conference report is here.

Closest Prior Art

This panel, the third in the conference and the last on Friday, looked at the closest prior art and how hindsight might influence the choice of the starting point for the assessment of inventive step.

Dana Beldimann (Professor, Bucerius Law School, Hamburg, Germany, and UC Hastings College, San Francisco, USA) briefly introduced the framework for obviousness analysis under US law. For an invention to be patentable under 35 USC § 103, it must contribute more than obvious advances to the state of the art. There is no concept of “the” closest prior art in US law. The “analogous prior art” must be considered as a whole. Prior art is analogous if it belongs to the same field of endeavor, or if not, is “reasonably pertinent“ to the particular problem, so that it logically would have commended itself to the inventor's attention (Circuit Check Inc. v. QXQ Inc. (Fed. Cir. 2015)). The analogous prior art can comprise multiple references, except in chemical and pharmaceutical fields, where there must be a lead-compound.

Beldimann, Brändle, Wilming, Hoyng, Bausch, Blumer (3rd panel)
References may only be combined when there is a justification to do so. The justification lies in teaching, suggestion or motivation (TSM) to combine or modify references and must be found in the prior art. The TSM standard is the main safeguard against hindsight bias. KSR International Co. v. Teleflex (US Sup. Ct. 2007) held that the TSM test is a helpful insight into reasons to combine, but should not be treated as a “rigid mandatory formula”. In addition to TSM, common sense can also constitute a path to proving obviousness, since a skilled person may “be able to fit the teachings of multiple patents together like pieces of a puzzle”. KSR v. Teflex may lead to a larger influence of hindsight than the traditional TSM test. There is some pushback from the CAFC. In Circuit Check v. QXQ, the CAFC held: “An alleged infringer should not be able to transform all systems and methods within the common knowledge into analogous prior art simply by stating that anyone would have known of such a system or method. The question is not whether simple concepts such as rock carvings, engraved signage, or Prussian Blue dye are within the knowledge of lay people or even within the knowledge of a person of ordinary skill in the art. Rather, the question is whether an inventor would look to this particular art to solve the particular problem at hand.”


Dieter Brändle (President, Federal Patent Court, Switzerland) noted that patentees always complain about hindsight when the patent is found lacking inventive step. Since the court must rely on references introduced by the parties, the choice of prior art is not determined by the court. Only what the parties present to the court can be considered.

A patent must have inventive step irrespective of the starting point of the analysis. The law requires that the invention is inventive over the entire prior art. If a patent is found inventive starting from one prior art reference, it must be assessed whether it is also inventive starting from another starting point, if such starting point is alleged. Unless a reference can be excluded “right away” as a valid starting point, it must be accepted as starting point. The selection of the starting point is not subject to hindsight bias; the hindsight bias only comes into play in the third step of the PSA, when it is assessed whether the skilled person would have modified the starting point such as to arrive at the claimed invention.

Willem A. Hoyng (Attorney, Hoyng, Rokh, Monegier, Amsterdam, the Netherlands) reminded everybody that the PSA is not found in the European Patent Convention. It is a tool developed by the European Patent Office to deal with its massive case load. It may be useful, but it is artificial and may also lead to wrong results. The choice of “the” closest prior art is often arbitrary. Courts should not be obliged to follow the PSA, which in fact there are not according to UK, German and Dutch case law.
Art. 56 EPC requires consideration of the whole prior art. That whole prior art may give indications (pointers) towards the invention or away from the invention. Closest Prior Art and PSA may have a tendency towards obviousness if not applied correctly. So one should consider the art as a whole and how much incentive gives the art as a whole the skilled person to come to the invention and what is his/her expectation of success. Incentive and expectation of success should be communicative vessels when deciding the obviousness question.

Willem ended his presentation with the statement that he considered the way the EPO deals with Art. 54(3) EPC a big problem which leads to multiple patents for the same invention (and – via divisionals – unacceptable uncertainty of third parties). Why can EPO and Dutch courts not read “the content of European patent application” broader? The skilled person should always read (when reading for Art. 54(3) EPC purposes) with the common general knowledge and consider each combination with the common general knowledge as disclosed. This would avoid the grant of multiple divisionals for essentially the same invention.

What you get for writing the conference report - an elephant
Thorsten Bausch (Patent Attorney, Hoffman Eitle, Munich, Germany) reiterated that Germany does not have a concept of closest prior art, but the Bundesgerichtshof demands that the starting point for inventive step analysis must be justified (BGH, 16 December 2008 - X ZR 89/07 – “Olanzapine”). If, for example, a document discloses 200 compounds, it is impermissible to take one of the compounds and argue that its formulation as a sustained release formulation was obvious when there were no specific reasons ex ante for the skilled person to choose this compound among the many disclosed.
Torsten’s conclusion from the unavoidability of a certain hindsight bias is that judges should be twice as careful and cautious before revoking a patent for lack of inventive step. On the other hand hindsight bias may favour the patentee when it comes to questions of claim construction and the doctrine of equivalents, as the interpretation of the claim with knowledge of the infringing embodiment may lead to a broader interpretation, and equivalents may be found obvious once they were employed.

Fritz Blumer (Member of the Legal Board of Appeal, EPO) stated that the case law of the Board of Appeals of the EPO emphasized continuously that hindsight should be avoided in the choice of the closest prior art. “[…] in order to avoid ex-post facto considerations, the closest state of the art is not generally that merely showing superficially the most similarities, but rather that conceived for solving the same primary problem or aiming at the same objective as the claimed invention and which requires the minimum of structural and functional modifications.” (T 026/04). Fritz gave an example of an invention of a multilayer panel for aircraft interiors. D1 discloses a panel for aircraft interiors, but with a different layer sequence. D2 discloses a panel for furniture with a layer sequence like the claimed one. The “same purpose” criteria should lead to the choice of D1 as closest prior art. Choosing D2 is likely based on hindsight and may lead to difficulties in formulating the objective problem (“alternative use for furniture panels” is hardly satisfactory).

The prior art should not be read with the invention in mind (T 970/004, cons. 4.1.2). Similar to the point made by Peter Meier-Beck and Thorsten Bausch, Fritz cautioned that one should not “pick and choose” from a prior art reference unless there were good reasons why the skilled person would choose the specific disclosure over another.

During the ensuing discussion, Robin Jacob interjected that it should be up to the attacker of the validity of a patent to choose the starting point from which he or she wants to attack the patent. Graham Ashley prefers using the term “relevant starting point” rather than “closest prior art”. One can start from several references, but the attacker needs to justify why he wants to start from each one of them. Similarly, Rian Kalden added that there could be several starting points, but not 30. There must be a justification for a specific starting point. Katherine J. Strandburg pointed out that the PSA starting from a single closest prior art reference assumed a cumulative view of innovation, which was not necessarily correct. Innovation may also consist of thinking about a problem. Dieter Stauder made the sensible point that many granted patents were never practiced and only a small fraction ever litigated. The case load at the EPO required a standardized approach for examination that was simple and predictable. Courts, on the other hand, are not and should not be bound by it.


Objective Technical Problem

Fritz Blumer reminded everybody that the PSA was not cast in stone, although in practice it was ruling. Rule 42(1)(c) EPC also requires a description of “the advantageous effect of the invention with reference to the prior art” in the patent application. The PSA goes back to the very beginning of the operations of the EPO (see T 1/80 of 1981). The definition of the objective problem to be solved is a moving target. When the closest prior art changes – for example after the introduction of claim limitations – the problem to be solved also changes.

Dirk Szynka explains the prior art
Dirk Szynka (Patent Attorney, König, Szynka, Tilmann, von Renesse, Munich, Germany) opined that the problem the problem to be solved is particularly prone to hindsight bias because it does exist only with knowledge of the claimed invention, as it is derived from the effects of the differences between the subject matter of the claim and the closest prior art. The choice of the spring board document (on which the problem is based) is very important. The more sophisticated approaches (e.g., BGH, 5 October 2016, X ZR 78/14 – “Opto-Bauelement”) require looking at the technical effect of the springboard reference. However, everyday practice of the first instance and the examination proceedings tend to identify a spring board document based on a more arithmetical maximum structural identity which can lead to an objective patent problem quite independent from the patent description and the original technical approach therein and may often lead to hindsight.


If one starts from a document that is not related to the problem or effect of the invention but the argument clearly leads to obviousness, it’s hard to justify disregarding it. After all, the law requires consideration of all prior art.


From Dirk’s point of view, the main practical hindsight problem is, however, the tendency to be observed in the EPO but also in German proceedings, to formulate a “concrete” technical problem by comparing a spring board document and a claim. Such argumentations explicitly seek to avoid a too “abstract”, “artificial” or “empty” problem. In his opinion the recognition of disadvantages of the prior art is a first step of the invention (if not clearly induced by the prior art or the technical knowledge of the skilled person). This approach is also supported by the Board of Appeal case law, e.g. T 835/00, and, more recently, BGH,  13 January 2015, X ZR 41/13 – “Quetiapin” and BGH, 11. November 2014, X ZR 128/09 – “Repaglinid”. Accordingly, a “general and neutral” technical problem must be chosen which must not contain elements of the solution and, further, no elements found in the elaboration thereof.

Katherine Strandburg (Professor, NYU Law, New York, USA) added that US law knows no requirement to identify a problem to be solved. Identifying or framing a problem can itself be inventive. The problem solved by the invention may play a role in the definition of the analogous prior art, because it must be reasonably pertinent to the problem. KSR v. Teleflex repudiates a narrow approach to problem definition. The problem is not limited to the problem this particular patentee tried to solve. The problem can motivate the skilled person to look at other prior art that was not designed to solve that problem.

Whether hindsight leads to “wrong” decisions is ultimately not clear. Policy should decide which inventions deserve protection, and this should be informed by the outcomes – does the protection of these inventions lead to welfare gains?

Katherine wondered whether the “fundamental attribution error”[1], i.e., our tendency to explain someone's behaviour based on internal factors, such as personality or disposition, and to underestimate the influence that situational factors have, might help the patentee. In the case of obviousness assessments, the fundamental attribution error may lead to an attribution of the invention to the effort and creativity of the inventor, rather than situational factors (state of the field). It may therefore lead to a finding of non-obviousness and counteract hindsight bias.

During the discussion, Christoph Ann (Professor, Technical University of Munich, Germany) said we should hear more about biases other than hindsight if we want to reach unbiased judgments. Stefan Bechtold (Professor, ETH Zurich, Switzerland) pointed out that if hindsight bias had the same magnitude across the board, it was not a huge issue from a policy perspective. If, however, it had different effects in different cases, it was problematic. We simply do not know which one it is.

There was much more at this conference, but the format of a blog post prohibit an exhaustive summary. I therefore will not report the findings of the panels on expert testimony and technically qualified judges, claim construction and the broader perspective (yes, hindsight plays a role in copyright, too!). All in all a very enjoyable conference with contributions from a broad range of highly qualified speakers. And the dinner was excellent, too.



[1] Ross, The intuitive psychologist and his shortcomings: Distortions in the attribution process, in: Berkowitz (ed.), Advances in experimental social psychology (Vol. 10), New York 1977, 173-220.

21 comments:

MaxDrei said...

What I always find so depressing is that all the judges gang up on EPO-PSA, to do it down. We need harmony, for testing obviousness, through the mind of that legal construct, the Person of Ordinary Skill in the Art. If not EPO-PSA, what other approach has any merit?

As far as I can see, the criticisms amount to nothing more than "But it ain't that simple!". Well, true, EPO-PSA applied correctly, is not simple. At least in its full-blown form, with exhaustive consideration of all the secondary considerations of obviousness.

But it is rigorous, predictable and objective. What other approach, equally fair to both patent owner and petitioner for revocation, can rival it? Yet it is waved away by the judges, dismissed out of hand. It is as if anything invented in a mere Patent Office is of no interest in the higher levels of sophistication in the courts.

Those judges coming from an American background should mull over the difference it makes, in the context of "hindsight", to assess obviousness as of a date (the filing date) which is AFTER the inventor has written her patent application. The written patent application is a "prior" document. It is legitimate to give its author full faith and credit when fixing the "realistic starting point" in the prior art universe, with which to begin the enquiry what was obvious (or not) on the filing date to the Imaginary PersonHOSIT-relevant-Art. After all, the drafter of the patent application does it with "hindsight" knowledge of the invention and the prior art. On a fresh sheet of paper, one defines and describes the contribution to the relevant technical field, to show off the invention in its best light. Allowing the attacker to elect a prior art starting point does no more than level the playing field.

Mark Schweizer said...

I don't think the judges are rubbishing the PSA. Most continental European jurisdictions are employing it, with minor variations and without requiring it by law.
Many feel unease with starting inventive step analysis from just one “closest” prior art reference. While the EPO in theory allows starting from several suitable starting points, in practice, if the invention is found inventive starting from the “closest” prior art reference, the assessment is stopped and the patent granted.
While this may be justified in examination proceedings, where resources are limited – and since each time you start from a new starting point, you must define the problem new, since the distinguishing features and their effects will be different, which is very time consuming – in civil litigation there are less resource constraints. It may therefore make sense to assess inventive step from several suitable starting points.
Opinions differ whether there should be any constraints on the choice of the starting point. Some leave it up to the attacker to choose the starting point, imposing no constraints (Switzerland). Others allow starting from several starting points, but require justification of each starting point as realistic (Germany). Still others impose strict constraints and require that the starting point has the same purpose as the invention (the Netherlands).

Anonymous said...

Nice write-up. Much appreciated.

Attentive observer said...

The PSA is indeed not a requirement of the EPC and it has been created by case law, originally by chemistry BA. It later diffused in other BA. I do agree that it is a good tool to asses IS, and one of its drawbacks is indeed the choice of the CPA. I do agree with Max Drei’s position.

It should however be abundantly manifest, that it is not the document having the most features in common with the claim which is the closest prior art. A washing machine drum is a cylinder with holes, but this does not mean that a concrete draining pipe with holes is an appropriate starting point to start discussing inventive step of the washing machine drum.

Some chemistry boards have gone over to a kind of adapted PSA in which it the problem which is meant to be solved by the application/patent which is taken and not the objective problem as it results from the "classical" PSA. It also considers the success of the claimed solution and depending on the outcome of this examination may reformulate the problem in a less ambitious way. It is then to be decided whether the proposed solution to this latter problem, or to the original problem, is obvious or not. As examples see for instance T 366/12 or T 195/13.

I do not agree with Mr Schweizer that in examination it is not possible to look at different starting points when assessing inventive step. If this does not become apparent, it is nevertheless part of the process.

May be it could be useful to publish the reasons why a patent has been granted by the EPO, i.e to publish the “Votum”. Presently it is excluded from the public part of the file following a decision of the President of the EPO. After all, when an application is refused, then the reasons for refusal are public. Why not in the reverse case. I never understood the logic behind this difference. Publishing the Votum could also increase the quality of granted patents.

One should never forget that the aim the aim of the EPO is only to grant valid patents, an examining division will or should never turn a blind eye to a possible lack of IS.

In opposition the situation is different and the opponent often adopts a plurality of attacks, with more or less success. It is enough in general to show that with one combination of documents, the claimed subject-matter is not inventive to revoke the patent, even if with some other combinations, it could well be considered as being inventive. This is also often done by the BA.

Contrary to Mr Hoying’s opinion, the PSA is not “a tool developed by the European Patent Office to deal with its massive case load”. See above. It is simply a tool, among others, to decide upon IS, and to avoid as much as possible hindsight. When the PSA was introduced by the chemistry BA, the workload was not so enormous, and if applied properly and reasonably it helps. By the way, no candidate to the European Qualification Examination will pass, if he does not correctly use the PSA.

For the rest, I fail to understand what Mr Hoying's comment about Art 54(3) has to do in a discussion relating to IS. By definition prior art under Art 54(3) can only be used for novelty. And to render a claim novel, it is enough to add to it a technical feature which is not disclosed in the Art 54(3) prior art.

What is suggested by Mr Hoying is one the one hand to bring in a little bit of IS, or more dangerous, merely to water down the requirements for novelty. May be with the aim to also enlarge the original disclosure when it comes to added subject-matter? It is true that the BA are severe when it comes to added subject-matter, but this to the benefit of third parties. One should never forget that a coin has two faces: the one is the strict approach to added subject-matter, but the other one is novelty, for instance of combinations from different lists.

MaxDrei said...

Helpful reply from Mr Schweitzer. Would he now care to illuminate us, how the "starting point" issue is handled by Opposition Divisions at the EPO, and in appeals from decisions made by Opposition Divisions, operating under EPO-PSA.

As far as I know, it falls to the Opponent to formulate obviousness attacks, using its own choice of starting point. As many different attacks as it can get up and running, with no restraint on the choice of starting point in each one of those lines of attack.

And the Division has to examine them all.

MaxDrei said...

Interesting observations from that anonymous at 17:16 hr today. Litigators (Prof Hoyng perhaps included) go out of their way to denigrate EPO-PSA. it is in their financial interests to complicate the obviousness determination.

As to Art 54(3) EPC, I recall another prominent litigator, Heinz Bardehle, on a crusade, pushing the notion of "Expanded novelty" (somewhere between novelty and obviousness) to adjudicate Art 54(3) EPC. An attempt at a compromise with the law in the USA, I suppose, but certainly a full extra layer of complexity. Perhaps Mr Hoyng is playing the same game?

I am curious about anon's remarks on fixing a prior art starting point that is to the inventor fair and realistic. It was always my understanding that one ought to give full faith and credit to Applicant, in its identification of a) the technical field and b) the subjective problem addressed by the real inventor. If it is washing machine drums and their rapid drainage, so be it. Of course, it will likely depend whether the claim is directed to a washing machine drum or more generally, to a perforated cylinder, what technical field the claim sets.

After the fair starting point has been fixed, the rest of the PSA analysis has its own momentum. The characterizing features will fix what was (for the imaginary PHOSITA) the objective problem. Then comes the assessment whether the prior art contains a TSM which the PHOSITA would take as a solution to that objective technical problem.

Anonymous, did I understand you wrong? Care to comment?

Attentive observer said...

Dear Max Drei,

I am not as anonymous as you think since we exchanged views quite often, be it here or in other blogs.

It was the will of the legislator to introduce Art 54(3), and any litigator, how important he thinks he is, should respect this. It has nothing to do with obviousness determination, and that’s it.

May be Mr Hoying is hoping that the UPC will be more lenient in this matter. I just hope that the UPC will not open Pandora’s Box. That he will push for this is however sure. The same goes with added matter, as for me the two aspects novelty and added matter are linked, whether one likes or not.

As far as my example with the washing machine and the drainage pipe is concerned, I should precise my thoughts. It obviously depends on the way the device is claimed. Representatives have a built in tendency to always generalise the inventor's thoughts. If it is claimed in the most general way, a pipe/drum with holes, then novelty is at stake.

But if it is claimed as either a wash machine drum or a drainage pipe, then one would not be suitable for the other purpose, and novelty is given. I would say it is not possible to prima facie enable a washing machine with a concrete drainage pipe. Let’s use some common sense!

I fully agree with Max Drei, that it is necessary to prima facie take into account the field in which the inventor works and the technical problem he wants to solve, with the proviso that the claim is drafted in a reasonable way. This is also the starting point for the adapted PSA coming up in certain chemistry boards.

We have then to live with the fiction that the inventor was meant to know all the prior art available, and here a closer prior art can be revealed by the search. I would not necessarily speak from characterising features, but features not found in the prior which is then closer to the claim as the one considered by the inventor. And here we end up with the objective problem.

To take an analogy with a puzzle, the first piece of the puzzle has to correspond with what the inventor thinks he has invented, i.e. the closest prior art and not any piece looking somehow alike. The objective problem is to fill in the missing part of the puzzle.

I never heard of the term PHOSITA, but once the objective problem is decided, the person of ordinary skill in the art will look if the remaining prior art, be it in the same field, in a neighbouring or even a more general filed, reveals elements which would help him to solve the objective problem. That he could do so is not correct, and is actually hindsight.

It is not because he finds what he considers the missing part of the puzzle that the subject-matter of the claim becomes obvious. That missing part has to fit properly and without any difficulty or pushing into the space left. We all have tried it when building up a puzzle! If the piece of prior art does not fit the space, then the subject-matter of the claim is inventive. If the puzzle can be completed, then there is no inventive step.

It might look a bit simplistic, but this is a way which can help to assess inventive step, whether you call it PSA or anything else. Explaining this to trainees has always helped them to grasp how IS should be assessed.

I might have been a bit long, but I hope to have answered Max Drei’s question and that he can follow my thoughts.

MaxDrei said...

Dear Attentive Observer, I am not comfortable with some of what you wrote (above) earlier today, namely:

"....once the objective problem is decided, the person of ordinary skill in the art will look if the remaining prior art, be it in the same field, in a neighboring or even a more general filed, reveals elements which would help him to solve the objective problem. That he could do so is not correct, and is actually hindsight."

I hope we both agree that the search in the prior art for hints or suggestions how to solve the OTP must be done in a way which excludes any knowledge of the claimed technical feature which solves the problem. either the prior art suggests using the claimed feature to solve the OTP or it doesn't. In this way, one excludes hindsight knowledge of the claimed solution.

Agreed?

Anonymous said...

At the last oral proceedings I attended, the Board identified what they considered to be the closest prior art and invited me to proceed on that basis. They refused point blank to consider any other starting point and told me that if I did advance arguments to the contrary, the only effect would be to necessarily prolong the proceedings as they had made up their mind.

MaxDrei said...

Super comment from anon at 19:53 yesterday evening. Are we to take it as a denunciation of the Problem and Solution Approach as such? I hope not. There is a world of difference between the Approach and the way individual European patent attorneys use it.

The comment exposes the gulf of misunderstanding between representatives from the English law zone and those from the civil law world. Oral Proceedings are not a trial. Better to think of them as that which follows in a criminal trial when the judge asks "Anything to say before I pass sentence?"

Oppositions at the EPO are deemed to be "primarily" written proceedings. The OD or the TBA meets the day before, to come to a view. At oral proceedings themselves, can it ever be anything more than addressing a panel that has more or less already formed a concluded view of the case? One the panel members have declared their opinion to the other two members, which one of them is going to admit, after oral proceedings the next day that "I've changed my mind"? None of them, right? That's why we reps have to win the case in writing BEFORE that fateful coming together of the Board, in their meeting the day before the Orals. The best we can hope for at orals is to give them pause, help them to see where they have assessed it wrong, and hope that the panel changes its collective mind already made up.

So much better, in some ways, how it's done in England, with a single judge who doesn't have to make up his (or her) mind till the trial is over.

But then again, a panel of three is essential when one judge is liable to get it wrong.

As Kahnemann and Haidt see it, the human brain is like a mahout riding a rogue elephant. The only way to arrest a rogue elephant going off in the wrong direction is two other equally large elephants, one on each side of the one that's gone rogue, those other two mahouts together bringing the matter to a calm and sensible conclusion.

Attentive observer said...

Dear Max Drei,

When carrying out a search, you first look at all the documents which bear a relationship with the invention as disclosed. In a second step you refine the selection of the documents, and look at those corresponding to the claims as filed. This process might be iterated once or twice more.

The whole reasoning about the presence or the absence of inventive step comes after the search has been made, and certainly not during the search.

What you suggest to the searcher is to blank out the feature which actually solves the problem. This is not possible.

Hindsight comes in, when in a ex-post facto reasoning the examiner claims that two documents can be combined, without giving any sound reasons as to why they should be combined, In other words he thinks just that the technical features in the documents could be merely added one to each other. Another possibility of hindsight is to bring in knowledge which has been gained after the effective date of the claims.

When doing a search, it is a situation a bit similar to the student when looking a past exam papers. There he has the problem and its solution, so it is easy to claim that it was obvious to come to the claimed solution. When sitting in a real exam, the situation is totally different. You do not have the solution at hand, you have to find it.

What I can agree with you, is by having the problem and its solution before his eyes, the examiner may be prone to decide quickly, that the teaching of two documents can be added, just at a finger's snap. This is another form of hindsight. The examiner should put himself in the position of the inventor, and humbly look starting from the prior art he considers being the starting point, i.e. the one of the inventor, or the one revealed by the search, whether he would have considered the further documents he found during the search. This humility is sometimes missing.

Whether you use the PSA or not, the risk of ex-post facto reasoning by merely adding the content of two disclosures is always there. The best way is to look at plenty of oppositions, were the opponents are experts at this type of combinations!

Looking for a document pointing to the solution is not hindsight. Hindsight is what I explained above.

If you request that the documents revealed by the search point one to the other, then you may simply grant anything being new, as such a pointer/link is rarely to be found in disparate documents.

In order to combine documents, whether under the PSA or any other system meant to decide upon inventive, the person skilled in the art comes in. There as well, he should not be equipped with divine powers, as then nothing would be inventive, and he should not be rebutted with the task, as anything would then be inventive.

It is a fine balance, which can only achieved by experience and a good lot of common sense. It is interesting to see that at such a conference as the one reported, lots of people speak who never did a search in their life, but are very good at judging what hindsight is. Where do they gain their knowledge or experience in the matter?

Attentive observer said...

To anon of 19:53,

Your statement is bit coarse. I doubt that a BA would be as blunt as this.

If this should indeed have happened, did you file an objection under R 106?
That is the only possible reply to such an apodictic statement.
If the statement was indeed uttered, then the the right to be heard was treated with contempt by the board.

Let's wait the decision and see what the Board actually said in this matter.

Anonymous said...

I am afraid that they were that blunt. The client was not prepared to go to the expense of filing an appeal. This actually took place a couple of years ago: I am now retired.

MaxDrei said...

All sorts of confusion in the recent comments. If it really was a "Board" that was intemperate, how could the aggrieved patent owner contemplate an "appeal"? perhaps it was an Opposition division that so offended the anonymous commenter?

As to Attentive Observer, I have the feeling that we are of much the same mind, just that we both struggle to express exactly what we think about hindsight and the EPO's Problem and Solution Approach.

What i think is that hindsight is excluded when everybody follows "the book", the process steps of EPO-PSA. If one side is not following it, to the detriment of the other side, well then the other side must call them out, loud and clear.

Who amongst readers will dispute it with me, that i) framing the Objective Technical Problem (OTP) free from references to the claimed solution is vital to the exclusion of hindsight and that ii) because no real human can exclude the confirmation bias that comes from hindsight knowledge of the claimed solution, the discipline of correctly framing the OTP is the ONLY fair and effective way to shut out hindsight from the obviousness determination.

In other words, EPO-PSA is the only known way, thus far to exclude a hindsight bias.

Attentive observer said...

I can only agree with Max Drei that, if one follows the "book", there should be no hindsight, and the PSA is indeed the best mechanism to avoid hindsight.

That is why it is fought so vehemently by persons like Mr Hoyng. If it is not done according to the book, then it can indeed lead to wrong results, like any other method. The choice of closest prior art is nothing but arbitrary, again if done properly, and by not my merely stating the the CPA is the document which has the most features in common with the claim at stake. This statement is valid whether one uses the PSA or not!

The PSA is certainly a useful tool when assessing inventive step, but not an absolute necessity. In pre-PSA times, in order to show lack of inventive step, the teaching was to have a continuous reasoning without any gaps or flaws. The could-would is not a creation of the PSA. This as well boils down to avoiding hindsight.

When I am opponent, the person skilled in the art combines any documents he thinks fit to deny inventive step, and if I am proprietor, I would not touch certain documents with a barge pole! The truth lies somewhere in the middle.

As I said before, a candidate representative cannot be successful at EQE, if he does not apply the PSA according to the book. Marks are given for every single step of the PSA.

I do not know any TBA which does not use the PSA, beside those using the amended PSA as defined in a previous comment.

I can also agree with Max Drei, that the word "board" should be reserved to the TBA. If the client did not appeal, it was then a division of first instance.

Anonymous said...

For the avoidance of doubt, this was not oral proceedings in Appeal or Opposition, but oral proceedings in examination, and I was using "board" to refer to the three-man examination team. Apologies for any confusion. In fairness to the EPO, it was the only instance of this behavior I have experienced, and never had anything to complain about in proceedings before Boards of Appeal.

maxdrei said...

Attentive thanks but I had to smile at your "nothing but". I hope what you mean is "anything but", that is, NOT arbitrary. To me, your "nothing but" is a statement that the choice of closest art under the PSA is indeed arbitrary.

As I observed earlier, it is hard to be crystal clear.

Attentive observer said...

When preparing a lecture, I cam across a very interesting decision of a TBA with respect to the choice of CPA. It is T 2255/10.

http://www.epo.org/law-practice/case-law-appeals/recent/t102255eu1.html#q%22T%202255%2F10%22

You do not have to read the whole decision, the catchword is enough. The last § is particularly interesting.

You might not agree, but I find it worth looking at.

MaxDrei said...

Many thanks, Attentive, for the tip to T2255/10. So far, I have read only the Headnote, but it is already clear that this decision is, for me, a "Must read".

I averred earlier that the Office, when asserting any particular prior art "starting point" for the obviousness analysis, should give Applicant full faith and credit for its choice of technical field and subjective problem.

But there's a corollary to that. What if Applicant puts forward a claim that is "supported" (whether deliberately or inadvertently) by a description that is built up around some other problem, one that is not solved by the feature combination of the claim? One can imagine a wily Applicant who already knows the closest art deliberately framing a description to deflect the EPO from what ought to be the indisputable PSA "starting point" reference. So, is it the description, or is it the claim, which fixes the prior art starting point? There is only one answer, isn't there? As the American courts have said "The Name of the Game is the Claim".

As of now, I think I agree fully with the Board. But first I must read the Decision. Thanks again for the tip to it, Attentive.

Attentive observer said...

Dear Max Drei,

T 2255/10 gives exactly the answer you need. What matters is what is in the claim, irrespective of what the applicant (or its representative?) may suggest when defining the problems he intends to solve.

He cannot fence off any prior art which is in direct relation to the claimed invention, even if he might try to lead into another direction when stating his problem.

To me the message is loud and clear, and is valid whether you apply the PSA or any other other method for assessing inventive step.



Attentive observer said...

T 1756/14 is an interesting decision as it does not use the PSA to decide on lack of IS, and even more in using common general knowledge as closest prior art!

I would summarise it as simply using common sense.

http://www.epo.org/law-practice/case-law-appeals/advanced-search.html

In spite of its simplicity, there is no hindsight in the negative assessment of IS.

The board dealt with in an elegant way, and did not follow the COMVIK approach of the ED. The result is however the same: refusal.

What do you think? I am addressing especially Max Drei.

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