Problem-Solution Approach: ur doin it wrong

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This particular Kat was busy digesting the Court of Appeal's decision in Actavis v Novartis when another part of the IPKat commented on it here.  Some comments have already started to arrive about what seems to be the most interesting part of the judgment, which involves Lord Justice Jacob having a lengthy stab at the EPO-style problem-solution approach (at paragraphs 25 to 50), and arguably getting it wrong.  The relevant bit of the judgment goes like this:
"Moreover the PSA does not really cope well with cases where the invention involves perceiving that there is a problem, or in appreciating that a known problem, perhaps "put up with" for years, can be solved. Take for instance the "Anywayup Cup" case, Haberman v Jackel International [1999] FSR 683. The invention was a baby's drinker cup fitted with a known kind of valve to prevent it leaking. Babies drinker cups had been known for years. Parents all over the world had put up with the fact that if they were dropped they leaked. No-one had thought to solve the problem. So when the patentee had the technically trivial idea of putting in a valve, there was an immediate success. The invention was held non-obvious, a conclusion with which most parents would agree. Yet fitting reasoning to uphold the patent into a PSA approach would not really work. For by identifying the problem as leakage and suggesting it can be solved, one is halfway to the answer – put in a valve. 
Another aspect of obviousness which is not readily answered by the PSA is illustrated by the 5¼ inch plate paradox. This runs like this. Suppose the patent claim is for a plate of diameter 5¼ inches. And suppose no-one can find a plate of that particular diameter in the prior art. Then (a) it is novel and (b) it is non-obvious for there is no particular reason to choose that diameter. The conclusion, that the plate is patentable, is so absurd that it cannot be so. 
What then is the answer to the paradox? It is this: the 5¼ inch limitation is purely arbitrary and non-technical. It solves no problem and advances the art not at all. It is not inventive. And although "inventive step" is defined as being one which is not obvious, one must always remember the purpose of that definition – to define what is inventive. That which is not inventive by any criteria is not made so by the definition. Trivial limitations, such as specifying the plate diameter, or painting a known machine blue for no technical reason are treated as obvious because they are not inventive. 
The PSA does not assist in providing an answer to the paradox. This is for the simple reason that there is no problem and so no solution to it."
The IPKat suspects that many people from the EPO, together with many European patent attorneys, will cringe on reading these paragraphs, since both types of difficulties would be well known and fit into the problem-solution approach without too much difficulty.  The first one fits because the problem could be seen to be, in context, how to make a plate according to a particular requirement (e.g. one to fit a table setting). The solution, which is to make the plate a bit bigger, is completely obvious.  The second one is slightly more interesting, because it involves recognising that the inventive step can lie at least partly in the recognition of the problem, following which the solution may be obvious.  In the case of the leaky cup, one way of looking at it could be that the problem may not even have been recognised as being a problem, but instead merely a fact of life, so the recognition of it being one with a potential solution could form part of the inventive step.  This is even given as one of the examples in the Guidelines (C-IV 11.6).  Of course, there may be other ways of looking at the same examples that also fit the problem-solution approach, but this Kat thinks that saying these types of inventions don't fit is not quite right.  It also probably doesn't help when the crucial step of identifying what the technical effect of the difference between the claimed invention and the closest prior art is somewhat skated over, if not missed out altogether.  If this is the way the English courts are going to look at the problem-solution approach, perhaps we would be better off as we are with Pozzoli and Windsurfing.
Problem-Solution Approach: ur doin it wrong Problem-Solution Approach: ur doin it wrong Reviewed by David Pearce on Wednesday, February 17, 2010 Rating: 5


  1. Our normally stalwart champion Jacob LJ seems to be snuggling up to the judges in Germany these days. They too (for their own good reasons) have no truck with EPO-PSA. Perhaps Robin first checked with his brothers in Karlsruhe and, getting encouragement from them, forged ahead. After all, what does a mere Patent Office, a coarse filter with a soft spot for the Applicant, know about judging obviousness correctly? Would that be any more than Robin's brother judges in EWCA, who nodded their agreement without so much as a single word of their own? If it is going to take Robin Jacob this long to get the hang of EPO-PSA, how much longer will it take Lloyd LJ and Stanley Burnton LJ.

    Or is it the English bar and big litigation law firms who nourished a negative mindset towards EPO-PSA, because it sorts out obviousness in rather short shrift?

    But let's not be too pessimistic. The US patent attorneys who are quickest to get the hang of EPO-PSA (and then enjoy it) are those so young that they have not had their mind already set by the "traditional" approach to weighing obviousness.

    The biggest pity is that Decisions like this do no credit to the English courts and so hasten the day when the UK, down to a minority of one, must accordingly swallow a Doctrine of Equivalents. Until now, I had been hoping that the UK jurisprudence could wean Germany off its barmy DoE. I'm disappointed mostly about that.

  2. I agree with David. Trivial features, such as the arbitrarily chosen 51/4 inch size plate (13.335cm in new money), do not form the basis for an inventive step if they do not contribute to solving the technical problem. If the apparatus, method etc containing or making use of this feature would work with any other size, then it does not make such a contribution to any inventive step. If, on the other hand, the size is crucial to the functioning of the method/apparatus in solving the technical problem, then it will be taken into account in assessing inventive step. However, sizes of components, if important, are usually expressed as relative rather than absolute values, and are so defined with respect to other components (e.g. plate A, is between 90-110% the diameter of plate B). Furthermore such values are usually expressed as ranges - point values of parameters provide very little protection.

  3. Proponents of intelligent design of, say, a human eye, assert that evolution can't explain it. They continue to make their assertions in the face of overwhelming evidence that Darwin's idea was right. Proponents of the very intelligent design of obviousness law by the Supreme Oliver assert that evolution in the EPO can't explain a plate or a cup. Those assertions can be refuted too.

    I note that the patent in suit is one that contains the magic words "It has surprisingly been found that...". Those who prosecute at the EPO applications of US provenance are very familiar with such wording. The words which follow (something like "night follows day" are to knock down the straw man that has been carefully erected in the preceding paragraphs. How many times has DG3 been faced with such a case? Hundreds of times a year I would think, for each of more than 20 years. And all disposed of in the same way, using PSA.

    I wonder whether Lord Justice Jacob has on his bookshelves a copy of the EPO Digest of Caselaw (any edition will serve). I would suggest that the section on "technical prejudice" and what you have to do to prove it, is relevant to this case.

    Paragraphs 36 and 37 of the Decision (reproduced above) are supposed to reveal the superiority of the English approach and the failure of EPO-PSA. But when read by somebody familiar with EPO-PSA, they achieve exactly the opposite result. This is what is so embarrassing about this Decision.

    I say that learning EPO-PSA is like learning to ride a bike. Once you have got it, you wonder how you could ever have NOT been able to ride the bike. But when anybody who has never in their life yet tried to ride a bike asserts to you "I can do that" be prepared for embarrassment when they mount their vehicle. I do wish that people who criticise EPO-PSA would first make some effort to understand what they so enthusiastically disparage. EPO-PSA is a Great British Invention.

  4. Jacobs' problems with the PSA are the same that every junior examiner at the EPO has. Sadly it takes some time to understand this approach.

  5. There seem to be some logical inconsistencies in the Pozzoli approach, since the notional "person skilled in the art", his common general knowledge and the inventive concept of the claim (steps 1(a) and (b) and 2) have to be done without reference to the state of the art. Only once the inventive concept has been identified or construed a comparison with the ste of the art is made in step 3. It seems that the inventive concept corresponds to the inventor's "subjective problem" discarded by the PSA.
    As I'm not very familiar with English practice, am I missing something?

  6. David can we be clear on one thing which troubles me from time to time. It is this.

    In EPO-PSA we have D1 corresponding to the pre-characterizing part of the claim and D2 for the characterizing part. In CA-Pozz. there is no counterpart to i) D1 or ii) D2.

    The way I see it, in CA-Pozz, D1 is the cgk of the PHOSITA. Huh? That alone renders CA-Pozz useless as a tool for examining obviousness of the claims of patent applications. D2 is either more cgk or Document X. I say this because i) England doesn't think much of obviousness attacks which rely on a combination of two specific documents selected with the benefit of hindsight from the prior art universe and ii) if X were D1, to be read by the PHOSITA with input of the cgk of the PHOSITA, that's more like a novelty attack than an obviousness attack, isn't it? . So, I'm confused. Windsurfer says you must compare the inventive concept with "the matter cited" as part of the state of the art. What's that "matter", if it isn't D1?

    So, when Jacob,LJ.goes on (para 27 to 29) about selecting the best prior art document, what he means (I suppose) is that one should invoke only your best D2 reference. I have the impression that Jacob doesn't understand the concept, specific to EPO-PSA, of the "objective technical problem". How can he, if he doesn't understand the concept of the realistic starting point. I would hope that he could find time to read that lovely little Decision T570/91,

    It strikes me that this appellation "objective technical problem" is unfortunate because so many people think they know what it means without having to learn it. Can't the EPO re-name "The Problem and Solution Approach" into something which sounds like it might be understandable only after lengthy study. I suggest the "Cadman Algorithm".

    Guidance please. Is the Windsurfer prior art "matter cited" D1 or D2?

  7. A shortcoming with the PSA, at least as the EPO uses it, is that the objective technical problem should be the one addressed by the applicant. This seems quite artificially limiting: if the skilled person would arrive at the invention by solving a quite different problem, this should still render the claim obvious.

  8. Don't understand that last anonymous at 10.05am. I have a different understanding of EPO-PSA as used by the EPO. Has that last anonymous passed the EQE, I wonder?

    Keep 'em coming, please.

  9. It's horses for courses. PSA is useful in the EPO. It is not useful in the Court.

    The test laid down in the Act and the EPC is whether or not the claim has an inventive step. If it does, it's patentable. If it doesn't, it isn't. If we re-phrase the test in any way then we depart from this test.

    The problem, of course, is that this test is difficult to apply in the context of patent examination, where time and resources are limited. The solution to this problem is to apply the PSA - i.e. to move away from the statutory test and apply a different test that is straightforward to operate, produces the right result in most cases, and does little harm in other cases. Perhaps that is why Jacob does not find the PSA obvious to try.

    The PSA, looked at in this way, offers a shorthand approach that will find an inventive step in 99% of the cases where one is present. (It will also find an inventive step in some cases where none is present; that is what opposition and revocation proceedings are for). Note the contrast; Court revocation proceedings are intended to identify patents with claims that have no inventive step, whereas examination proceedings must identify applications with claims that do have an inventive step.

    As for the 1% or so of cases where the PSA fails to find the inventive step that is nevertheless present, then it for the EPA to point out the various TBA decisions that affirm that PSA is one approach to judging inventive step but is not the only one, and that if the applicant can demonstrate an inventive step then the failure of the PSA is of no consequence. Been there, got the T-shirt (and the 71(3) letter).

    In the Court, the time and the resources are there to allow us to look properly into the statutory question: does this claim have an inventive step. We can hear from the inventor, from experts in the field, and perhaps from witnesses who were also working in the field at the priority date. We can, in short, do it properly. Moreover, given that a dispute has arisen, we should do it properly.

    We have to strike a balance between perfection and efficiency. The position of that balance depends on the circumstances. So, in the EPO the PSA (applied intelligently) is the right approach. In the Court, it is the wrong approach.

  10. MaxDrei:

    I agree with your sentiments and the sentiments of many of PJ's critics.
    But I wonder whether we need to be very careful with our language when talking about the PSA.

    In particular, I wonder whether in your 9:44, you might be understood as confusing the retrospective approach of the PSA (necessary, for an arbiter of patentability to survey the prior art universe and determine whether a hypothetical skilled person, starting from a most likely starting point and making a noninventive step, would arrive at the putative invention) with an impermissible hindsight approach (which imputes to the skilled person himself knowledge of the invention yet to be achieved).

    I feel that labelling the PSA as a method in which one must "rely on a combination of two specific documents selected with the benefit of hindsight from the prior art universe" muddies the waters as to the legitimacy, expediency and realism of the PSA.

    The PSA is far from unrealistic. It asks "Is this document a realistic starting point for the skilled person". If the answer is in the affirmative, then the skilled person is allowed recourse to the full universe of prior art to motivate him, and to determine whether, without the benefit of hindsight, he will make the invention "ob via", in his normal course of activity. If he cannot derive motivation or faculty therein to do so, he will not, and the invention is patentable. Is this not exactly what the test for obviousness should be - to reject that which might reasonably occur "ob via" and to permit that which does not occur "ob via" and yet solves some problem, to the benefit of society?

    It is so important to be clear that at no point does the PSA impute impermissible hindsight to the skilled person. However, as assessment of patentability is necessarily made after the invention is conceived, it must inevitably have retrospective quality.

  11. Anonymous 10:05 - Not sure which PSA you're applying, but in Europe, ex Guidelines C-IV-11.7.2 - 5th paragraph - "[T]he objective technical problem derived in this way may not be the what the applicant presented as 'the problem' in his application..."

  12. Hi Max, I'm not an expert on this, but your attack on Windsurfing seems to be based on the assumption that 'only if Windsurfing can be shown to be equivalent to PSA is it valid'.

    If D1 is the pre-characterising bit and D2 the characterising bit (and all claim features are covered by D1 and D2), then equally D2 could be the pre-characterising bit and D1 the characterising bit. To avoid this the EPO has a system for chosing the 'closest' prior art so that it should be clear which of D1 or D2 is considered 'closest' and therefore pre-characterising. As a result, PSA can then seek differences over D1, formulate the problem and see if D2 makes the solution to that problem obvious (to put it briefly).

    My understanding is that Windsurfing doesn't restrict you to starting from either D1 or D2. They both, separately, form part of the state of the art (the "matter cited"). The difference is that someone has combined them. Windsurfing can then ask whether it is obvious to do so.

    Both approaches answer the same question (is it obvious to combine D1 with D2?), but they arrive at that question through a different approach. I don't think it's fair to criticise Windsurfing because it doesn't have a concept of (what is after all a legal fiction) 'closest prior art', which is what I think you are trying to do. Equally, I don't think it's fair to criticise PSA because it does have such a concept. They're just different. Whether it's good that different jurisdictions have different approaches is another question!

    I don't have a particular preference for either approach, although I probably use the PSA more often. I quite like the structure that the closest prior art and the technical problem gives to the arguments.

    Comments are always welcome as I'm in the middle of my exam preparation!

  13. I’m not sure that classic PSA does deal with the Haberman case well. However I’m not sure that standard windsurfer does either, it required secondary indicia to be held inventive..

    Oddly Jacob makes out that Haberman vs Jackal involved a non-obvious problem and that “ by identifying the problem as leakage and suggesting it can be solved, one is halfway to the answer”. In fact in that case Laddie stated

    “There is no dispute that the problem which Mrs Haberman's patent seeks to solve, .... has existed for a very long time. Nor is there any doubt that it was seen to be significant. ... The industry as a whole appears to have wanted to produce spill proof trainer cups “

    It was a case where the solution looked obvious but it survived obviousness attacks because of long felt need, commercial success, the age of the availability of the solution and failed attempts at solution by others.

    Laddie concluded

    “At times I could not see how this could be anything but obvious. But in the end I have not been persuaded. ...In view of the obvious benefits which would flow from it, I have come to the conclusion that had it really been obvious to those in the art it would have been found by others earlier, and probably much earlier”

    Having the EPO examining division contemplate all that rather than apply PSA with a few documents in front of them might be difficult but the TBAs have taken such things into account using any times and upheld patents because of them (T 1077/92 has a similar conclusion to Haberman). Haberman’s EP actually did get past the Examining Division. Still I don’t think its too much of a stretch to suggest that such cases don’t fit that easily with PSA.

    The accusation that PSA fails to deal with arbitrary features is wrong though IMO. Its actually one of its strong points- no problem solved=no inventive step and features which don’t contribute to the solving the technical problem can be ignored, There have been sections on that in the EPO Digest of Caselaw long before Comvik brought made it part of every day examining of computer implemented inventions.

    I find it increasing odd that Jacob doesn’t extend this reasoning regarding “arbitrary and non-technical” and things done “for no technical reason” to software patents to apply inventive step to them in a way more similar to the EPO.

    In Aerotel/Macrossan Jacob stated that a CD containing new music was new and non-obvious but had to be held non-patentable. He implied that rejecting it under Art 56 was a distortion and improper but in fact it fails to be inventive using the test he sets out above.

    Millions of CDs have been previously produced with their pits in very slightly different places to reproduce very slightly different noises. The only reasons that the positioning of the pits with this new music would be considered non-arbitrary are subjective -musical creativity, emotional impact etc that some but not all people might say they experience. Inventive step can’t sensibly be based on subjective effects. The inventor of the 5.25 inch plate could honestly declare that he has surprisingly found that he loves the number 5.25 and the thought of the plate being that size makes him happy but it would still be objectively arbitrary.

    The EPO go further in ignoring objective but non-technical effects (such as increasing profit) but as in this decision the UK judges already frequently use the word “technical” in inventive step and ignore commercial inventions.

  14. Anonymous 10:05 here: Try reading on to the 6th paragraph of Guidelines C-IV-11.7.2 "...any effect provided by the invention may be used as a basis for the reformulation of the technical problem, as long as said effect is derivable from the application as filed". Have a look at T 386/89 Wheels/GKN SANKEY where the Technical Board of Appeal refused to consider the problem of enhancing fatigue life of wheels for inventive step because it wasn't the problem disclosed by the applicant. The EPO will only consider a "semi-objective technical problem".

  15. Dear Anonymous 10.05. Thanks. We differ on whether it's a good or a bad thing that an Applicant, years after filing, can get through to issue on the basis of a technical effect (solution to a problem) that was not mentioned in the app as filed. The Americans have a requirement for a "written description" of the invention, in the app, already on the filing date. I think that's needed, not just as their counterpart to our 123(2) but also as a fundamental part of any FtF patents system, to get the balance right, between the inventor and the public, giving Applicant a full measure of protection for the contribution to the art made on the filing date, but no more. The EPO lets in post-filed evidence. Within reason, that's OK but not, I think, when it's to set up an invention that had not yet been conceived when the app was filed). I see these gradualist legal aspects of EPO.PSA evolving nicely, year on year.

    Somebody upthread cautioned about "hindsight" vs "retrospective" vs "ex post facto reasoning". That person is right. I agree. I'm sorry if my earlier postings, instant and not carefully composed, might have confused some readers. Never mind though; this thread is both useful and fun, isn't it?

    Finally, where does anybody get the idea from, that English fact-finding is incompatible with EPO-PSA? What is stopping the English court going into full Oliver mode, to explore the gap between D1 and the claim, replete with cgk, secondary indicators, expert witness evidence secured under cross-examination, discovery, the lot? If it were to do this, it could then be donning the mantel of "Tutor to DG3".

  16. Anonymous 10:05 to MaxDrei: it may well be undesirable that a patent can issue on the basis of a technical effect not perceived by the applicant. But equally I would like an opponent to be able to have a patent revoked for obviousness on the basis of a technical effect not perceived by the applicant. It is this latter point that concerns me more.

  17. Anonymous at 1.37pm You have lost me there. I'm the Opponent, right, and I'm going to get that tiresome spurious patent citing a technical effect which is not mentioned in the patent. I don't follow. Should I also be filing a patent application on an invention I just made?

    I think I'm getting echoes of a very early case at the EPO, a favourite of UK commentators (Alan White maybe) to the effect that, if Applicant had been more modest about the magnitude of the problem solved (technical effect achieved) he would have survived the opposition.

    Or are we talking here alleged but unsubstantiated (illusory, to use the word of the month) technical prejudice?

  18. "no problem solved=no inventive step"

    NO NO NO! No extra technical effect = problem is a mere alternative = usually obvious. There is always a problem to be solved, even if that is "providing something that does the same as the prior art but in a new way".

  19. Max and Anon: The both of you seem to be at cross purposes.

    Revisit 6th paragraph of Guidelines C-IV-11.7.2 "As a matter of principle any effect provided by the invention may be used as a basis for the reformulation of the technical problem, as long as said effect is derivable from the application as filed."

    Key word here is "derivable", in the sense of derivation from that which is explicit and that which is implicit in the disclosure read through the eyes of the skilled person.

    The skilled person sees in the spec that a feature or feature combination is provided. Clearly, each feature or combination is provided for a purpose, possibly more than one, by the draftsman.

    The question then is: what does he see in the spec that allows him to deduce a technical effect?

    It is Art 123(2), not Art 56, that prevents the Applicant from claiming a combination of features not previously disclosed as interrelated or recognisable to the skilled person as providing a particular technical effect.

    With knowledge of the invention, by reading the specification, the skilled person can understand the technical effect of the claimed invention, even if a priori, asked to provide a solution, he would not have solved the problem despite recourse to the prior art universe. Hence the justified prohibition on hindsight in assessment of inventive step.

    Anon: Art 123(2) seems to be your friend in Opposition here. I now merely refer you to Guidelines C-VI-5.3.2 3rd para, last sentence, and T284/94.

  20. @Anon of 11:42:
    "As for the 1% or so of cases where the PSA fails to find the inventive step that is nevertheless present, then it for the EPA to point out the various TBA decisions that affirm that PSA is one approach to judging inventive step but is not the only one, and that if the applicant can demonstrate an inventive step then the failure of the PSA is of no consequence. Been there, got the T-shirt (and the 71(3) letter)."

    I'd be interested in any DG3 decision in which the Board concludes that an invention is non-obvious even though proper application of PSA indicates that it is not.

    For the moment I'm pretty sure that an Examining Division can simply ignore all obviousness arguments of an applicant who chooses to ignore the PSA approach taken by the Examining Division. What one should do is point out at which point(s) the Division errs in applying PSA.

  21. @Anon of 10:05 aka 12:39PM:
    Indeed the effect must be derivable from the application as filed, but this should be understood as meaning that if no such effect is derivable (that is objectively achieved by the features that distinguish the claimed invention from the closest prior art), then no problem is solved and no inventive step is present.

    So it is not (well, should not be) the case that an inventive step is found to be present only because the applicant was lucky enough not to mention a particular effect. T 386/89 does not contradict this.

    To sum up:
    - the effect MUST be solved by the distinguishing features (often ruling out the subjective problem identified in the application, e.g. if the examiner finds better prior art than what the applicant started with); and
    - the effect MUST be derivable from the application as filed (not the same as Art. 123(2) though).

    If there is no such effect, there is no inventive step (but in many cases one can find an effect such as "providing an alternative"). If there is such an effect, the question is if the prior art teaches the skilled person that this effect can be achieved using the distinguishing features. If yes, no inventive step (if the skilled person knows that the effect CAN be achieved using a particular feature, he WOULD apply that feature, even if there are a million other ways of achieving that same effect). If no, we have an inventive step.

  22. It would be helpful if the various anonymous entities could each use their own peculiar pseudonym.

    Anon at 7.13pm. OK but what about the differences between chemistry and engineering? With engineering cases, you can derive technical effects from an as filed disclosure of a technical feature combination. But if the as filed discloses Molecule X in a topical formulation, for alleviating baldness, Applicant is silent as to alleviating dandruff, Examiner finds molecule X by mouth for alleviating baldness, can you derive the topical dandruff cure additional effect from the as filed disclosure reservoir?

    Now suppose that the chemist leaves the description and (topical) claim unamended and supports the non-obviousness of the claim with a letter that speaks of the magical anti-dandruff effect, and has annexed to it a supporting compendious experimental report with loads of comparative data, where then is his offence against 123(2)?

  23. Then I'll call myself Anonymous 123456 ;-) (this is my first posting)


    If the applicant filed additional evidence about the effect on dandruff, it could not be added to the application (I mean: to the patent as it will be published) under Art.123(2) EPC. Now, INDEPENDENTLY of that, because dandruff is not the same problem as baldness (they have different causes and different effects I guess, but I'm not an expert in hair/skin diseases):
    1) the examiner would probably not accept amendments for claiming explicitly a treatment against dandruff (Article 123(2) EPC)
    2) he would probably not take the applicant's supplementary evidence (about dandruff) into account for evaluating inventive step (Article 56 EPC) of the un-amended claims.

    To revive the original topic: David is right that the two examples (the cup and the plate) actually fit very well in the PSA. With all due respect, Lord Jacob does not seem to be very familiar with the PSA as applied at the EPO. Here are two more ways to deal with them under the PSA:

    I don't know whether this "cup" case has actually been the topic of an application filed at the EPO but I believe that an EPO examiner would have concluded, at that time, that the cup with a valve was inventive because, in order to solve the problem of the leaky cup, the person skilled in the art had to look in another technical field than his own in order to find a solution (I'm not a skilled person in the fields of cups and feeding babies, but right now I can't think of any item used for similar purposes in the prior art which uses a valve - but maybe I'm wrong). To say that the solution of the valve is obvious once the problem is identified (as: how to prevent leakage) is a perfect example of the hindsight that the EPO examiners are taught to avoid.

    About the plate, it's even simpler: I guess such a plate would be patented in the US (with all due respect for USPTO folks) under the approach of "structural non-obviousness" and rejected at the EPO under the PSA because the only problem that it solves is actually: to provide a different plate, and the selection of a different diameter to solve this problem is not inventive because it is one amongst many straightforward options and it doesn't lead to any surprising technical effect (do these sentences sound familiar ?).

  24. The discussion of plate sizes brings to mind the story a few years ago of a Russian bear bottle design where the shape was mathematically formulated. The formulation was not in the prior art but bottles according to the formulation were. See e.g.


  25. Anon 123..I do know that Applt can't add the evidence to the description. I thought I had made it clear that the post-filed evidence is in the EPO file but not in the specn and would help to establish that the claimed scalp treatment liquid containing molecule X is not obvious because, unexpectedly, it solves dandruff as well as baldness.

    Readers, to my mind, the issue of post-filed evidence is really hot, and really contentious. Look how it flipped the result, not only in the Angiotech TAXOL-coated stent case but also in the Lilly v HGS case.

    Question: When you're allowed to bung in post-filed comparative data to reveal a selection invention, is there a drafting incentive, carefully to state in the app as filed that your molecule X cures everything. In prosecution, when you do know for the first time what exactly it does cure, narrow the claim to that use and put in the supporting evidence that will get you home.

    The Americans are scathing about "First to File". It offends public policy objectives, they assert, because it encourages premature filing of speculative conceptions, not yet reduced to practice.

    The EPO seems to be on the side of the speculators though, doesn't it?.

  26. Going back to the original post, I think this maight just be an issue of semantics, or what you think "PSA" actually refers to, and on that basis I think Jacob is probably right.

    Taking the Haberman example, you (David) say the PSA can handle this by recognising that noticing the problem itself was inventive. That's fine, and the EPO do indeed do this all the time, but when they do are they actually using PSA? The example you cite is in the Guidelines at C-IV-11.6 - this isn't the section on PSA. The section on PSA itself says PSA has three main steps, the third of which is "considering whether or not the claimed invention, starting from the closest prior art and the objective technical problem, would have been obvious to the skilled person". There is no mention of considering whether identification of the problem itself is inventive, either here or anywhere in the section on PSA.

    So, I think it could reasonably be argued, it is not that PSA is able to handle such types of invention (it can't) - it is that the EPO is able to handle them, by choosing not to use PSA in such a case.

    So there you are - this whole "controversy" is just about semantics. One point of view is that Jacob has taken an overly restrictive view of PSA. Another is that, if the way you decide inventive step doesn't involve finding a problem and then seeing if the solution would be obvious, it's a bit of stretch to say you're using the "problem and solution" approach. I think I tend towards the latter view myself, but as with all disagreements about semantics I'm not convinced there's much point arguing about it.

  27. Good question Tom. So, if we take a toddler's drinking cup, with a lid and a mouthpiece slit, but no one-way valve, and identify the valve as the characterizing feature and the absence of raspberry stains on the white carpet as the technical effect, would it not have been obvious, using EPO-PSA, to install a well-known one way valve?

    That might depend on whether the state of the art includes a hint or suggestion (TSM), to resort to a valve, to prevent the staining occurring.

    But, if the art is devoid of any mention that raspberry stains emanating from such lidded cups has ever been noted as a problem, where's the TSM in the art? If no TSM, no obviousness.

    This is another reason I am a fan of EPO-PSA. It teaches the US Americans how to do TSM properly. Junior US attorneys soon get infected with my enthusiasm. I find it a shame that the English are more resistant.

    Or am I missing something here?

  28. MaxDrei,

    You want us to have peculiar pseudonyms? I shall be known henceforth as Q.

    I am the one who refers to the Guidelines, and who thinks Art 123(2) is relevant.

    Let us look at the baldness cure problem. Can the skilled person, from the application as filed, at the priority date, recognise the technical effect of the topical liquid in curing dandruff, and thus recognise this as a valid problem which the invention solves. Without Dr Dandruff's dodgy data, he cannot. Therefore he cannot recognise the invention claimed as solving any problem - and it is correspondingly found not inventive.

    For the skilled person to recognise the problem solved and the technical effect produced, he would need to see the data in the application, or at least a pointer to the effect, unless his general knowledge or the prior art teaches him that a dandruff cure might result as a matter of course. In the latter case, obviousness would then be called into question on the basis of the cgk or prior art.

    Hence, Art 123(2) blocks addition of data to the application which would allow the skilled person to identify "the invention". In the example, the skilled person can ONLY perceive the topical treatment as an alternative to the oral treatment, therefore this is the technical effect used to frame the problem used in the PSA.

    Similarly, claiming a vast range of conditions without data to back them up will not assist the skilled person in recognising that the particular selection from the list is a solution to a technical problem. That, however, is a question that cannot be resolved by reduction to a toy example, but will depend on what the specification actually says, and what is accordingly disclosed to the skilled reader.

    The key question seems to be what technical effect the skilled person can perceive from the application as filed.


  29. Reference to C-IV 11.6 will not help Haberman-type cases in the future.

    The section indicating that recognition of a problem, even if the solution is trivial, may be inventive has been deleted in the draft 2010 Guidelines [see C-IV 11.9].

    This will lead to imaginative arguments "the problem was not realising there was a problem/not bothering to address the problem, and the solution was realising the problem/doing something about it".

    PSA was introduced to make examination easy - it does not necessarily lead to the correct result [compare TSM as considered in KSR in the US?].

    And if PSA is so easy - how do you explain the EQE 2007 opposition paper fiasco? There is at least an arguable case that the EQE examiners did not understand PSA.

  30. Max - you seem to be turning the Haberman example into an example where the solution ISN'T obvious from the problem, which avoids rather than answers the issue.

    To rephrase my point: there are inventions where the solution is obvious when you know the problem, it is the identification of the problem that gives the inventive step. PSA, according to the three steps given in the EPO Guidelines at least, finds such inventions obvious (the solution is obvious from the problem, so the steps given in the Guidelines say the invention is obvious). If you want to modify your approach to inventive step so that such inventions ARE found inventive, that's fine (and that's what the EPO do), but there's a fairly good argment that by doing so you're not doing PSA anymore.

  31. I'll be Anonymous P. if you will.

    I am fairly appalled that the PSA has become the only way according to the EPO to prove/disprove inventive step.

    First of all, it is a technique. And a technique it should remain. If it was to be the religion it is being made by the EPO, then I suggest they should at least amend the EPC A56 to clearly state out that inventive step derives from the PSA.

    Like all techniques, PSA has drawbacks, or sweet spots which can be taken advantage of, contrary to what you suggest Max.

    One of them is bogus effects. You can add a weirdo yet somewhat plausible effect to a characteristic, which is unlikely to be disclosed in the art, or choose a weird dimensioning factor along the same lines.

    And often the OD will fall for it. And not all clients file an appeal.

    I have seen several cases (oppositions in the firm - no case law) where, if there is a specific technical problem stated in the application, the OD blattantly ignored the fact that there were other technical effects and corresponding problems stemming from the same difference and which where solved appropriately by the prior art.

    The OD ended up saying something along the lines that there is nothing in the cited documents which relates to the technical problem solved by the application, and that there was thus inventive step.

    Finally I don't know much about chemistry, but I do a fair deal of advanced optics and such. And if the PSA is fairly well suited to mechanical application, it is not in advanced physics.

    Take, say a very advanced optical fiber. It is not true that the skilled man will fiddle and change his whole set up which relates to a chosen theory, for the sole reason that it is already hard enough to get something to just work.

    We get obviousness rejections everyday based on a combination of a very advanced patent in combination with general knowledge. And I know that there are OPs, but they are expensive, and I don't even mention appeal.

    I know that this is a little off-topic, but this behaviour is a direct consequence of considering the inventive step can only be assessed through PSA.

    PSA is just a relatively pretty reasonable sound way of putting together a reasoning.

    Which is particularly fit for making an inventive step attack, but not always fit for discussing inventive step.

    Anonymous P.

    ps: I have passed the EEQ, failed the C paper (like many, my copy wasn't graded more or less), and I passed the following year with 69 while missing a novelty attack - not that I want to tell my life, but just to say I sort of get the PSA

  32. Meldrew pointed out that "the section indicating that recognition of a problem, even if the solution is trivial, may be inventive has been deleted in the draft 2010 Guidelines [see C-IV 11.9]." Does anyone know why?

  33. Thanks Anonymous P. Can we in our debate keep in mind the difference between the Approach, as such (useful words, those last two) and the way the Approach is implemented? Meldrew points out the EQE fiasco. Another poster has reminded us that many EPO Examiners don't yet "get" EPO-PSA.

    Let me posit the situation in an EPO opposition, in which all three members of the tribunal, and both EPA Representatives, all use EPO-PSA as it should be done (and both representatives have clients that follow advice). I say it then delivers correct results. You say not, and I disagree. But then, that's what gives value to threads such as this. I look forward to your next thrust.

    BTW, can you help Tom and me. I thought I had set out a situation where perceiving the problem was the invention. Everybody knew that you need a one way valve in a babies' bottle, but the fact was nobody had come to the idea that you need one too, in a trainer cup. Tom thinks I'm not understanding his point. What do others think?

    Paul Cole especially. The Haberman case reminds me of the advice in his book, and T570/91 again. Limit the field from infants' drinking vessels to trainer cups, and through to issue you go.

  34. Readers of Patently-O will know Max well as a tireless champion of PSA. I remain sceptical of its value beyond being an effective coarse filter for establishing obviousness: IF the claimed subject matter can be shown to be derivable as an obvious solution to an obviously extant problem associated with the closest prior art, THEN you have a strong prima facie case that the claim is obvious.

    The PSA undoubtedly has its place, but should be kept in its place. That place is as a mechanism for constructing an obviousness attack. If a LEGITIMATE PSA analysis results in the claimed subject matter, then a finding of obviousness follows. BUT, applicants should not be forced to use PSA as a mechanism for justifying inventive step, because an inventive step need not result from “seeking a solution to an objective technical problem” based on closest prior art that has been determined with hindsight from the subject matter of a claim.

    Using PSA to “prove” obviousness is one thing. Using it to prove inventive step is something quite different: proving a negative – non-obviousness. You cannot prove non-obviousness. Any patent claim is always open to attack, even if previous attacks have failed. A final finding of obviousness is irrevocable. PSA can be used to shift the onus onto the applicant/patentee. A rebuttal may refute the PSA analysis one way or another, but that is not the same as using PSA to prove inventiveness. If an obviousness attack is successfully refuted, the claim must be regarded as inventive by default until a successful attack is mounted.

    Given a claim comprising a combination of features that is properly supported by the application as filed, it should not be for the applicant to identify a problem that is solved by the combination in a non-obvious way in order to establish inventive step. Clearly, it may be helpful for her to do so, but - if the claim is properly supported - then the onus should be on the assailant to apply the PSA in order to establish a reason for rejecting the claim.

  35. Ok I'll try to stick to the "as such".

    I don't think that PSA does not deliver correct result. I think that, as Patently mentioned, "It's horses for courses". And that sometimes the OD should run differently.

    Because when the 'bogus effect' or the 'bogus wording' (like giving a dimensional characteristic which has close to little physical signification) are used, they WILL get the patent delivered while correctly applying the PSA.

    And to the opposite, if you apply PSA to a cutting-edge field, most of the time, you will kill inventive step for no valid reason.

    I'm just calling for a little open mindedness in inventive step assessment, particularly according to the "cutting-edgeability" of the invention.

    Now concerning your cup example, I guess I'd be more severe : a trainer cup is close enough to babie's bottle. I don't care that they're two so-called different fields : a guy who makes baby bottles will look in the trainer cup field.

    A more challenging example would be for me the same situation, but with say a baby bottle with the one way valve known, and the invention a sports cup for a cyclist for instance. On the one hand, they are far apart technical fields. On the other hand, if the disclosed one-way valve is not in any manner tailored to the baby situation, one could say that it is the function of the one-way valve (ie anti-spilling) which is disclosed, and that the baby bottle could be used by a cyclist for that matters.

    Anonymous P.

    ps: I just saw Eurodisnae's post, and he explains exactly what I meant to say as far as relevance of the PSA is concerned. thank you.

  36. Max - I think I understand what you are saying. (Though I may well be wrong!) The problem is stains on the carpet. The solution is a valve. We know that the problem is not obvious. A necessary consequence is that the solution is not obvious from the problem. This is because the problem has never been mentioned in the art, so there is no hint in the prior art to get from the problem to the solution. So PSA will not show that the invention is obvious, fantastic.

    The problem I have with this is that I can't see any reason to believe the "necessary consequence" above - I think it is obvious to use a valve to stop leaks, even if no hint can be found in the prior art. The solution IS obvious when you know the problem. Conseqentlty I think PSA fails here.

    I'd also note the example cited from the Guidelines (though maybe this is why it's been deleted?): "An invention may, for example, be based on the following: (i) the formulation of a new idea or of a yet unrecognised problem to be solved (the solution being obvious once the problem is clearly stated)". Can you get this example to pass PSA?

  37. P:

    Q here.

    "Take, say a very advanced optical fiber. It is not true that the skilled man will fiddle and change his whole set up which relates to a chosen theory, for the sole reason that it is already hard enough to get something to just work."

    In that case, the argument should always be that the skilled person in this field cannot pick and choose elements from other applications since the technical effects are generally attributed to to the arrangement as a whole, and that identical elements in different contexts have different technical effects or unpredictable side-effects.

    Now, the correct PSA reasoning should be that D2 teaches the whole arrangement, and does not disclose that the specific points of novelty claimed provide the effect in other arrangments. Nor would the skilled person recognise that a hybrid arrangement would work.

    I think the broader point should be that the PSA gives one a co-ordinate system, if you like, to address inventive step. The position of MaxDrei and the EPO faithful seems to me that, like rectangular and spherical co-ordinates, you can always transform a correct argument in any other inventive-step scheme and express it in PSA. It may not be the most elegant, it may not be the easiest approach, but it can be done. The corollary is that if an argument can't be transformed to PSA, then it can't be correct.

    On the other hand, PSA detractors seem to believe it's more like printing's color spaces: sure you can express a lot of colors in CMYK, but you can't express all of Pantone. Therefore one only uses PSA for the cases amenable to it, and uses other techniques alongside or instead.

    If MaxDrei ever finds a personally convincing inventive step argument that he cannot recast into PSA coordinates, then he will have to accept that PSA is not the last word.

    I think there is a third way. Why not recognise that "inventive step" is a concept which is necessarily open to interpretation? There is no "right answer" to which we are all aspiring. There is no underlying physical property of "inventiveness". Yet we are all talking about it as though it were something one could measure. We talk about whether PSA gives the "right" or "wrong" answer.

    Perhaps what we should be talking about is what it is we want to prevent patents being granted for, and what it iswe want to permit patents being granted for. I.e. what inventiveness means to us personally. Once the debate is phrased in those terms, we have a benchmark against which any methodology can be judged. And I suspect that what we will find is that those who think PSA is a complete basis set for inventiveness argument have a subtly different value set as regards their concept of "inventiveness" than those who think it is a tool, and a tool applied bluntly at that.

    But for those of us who have to write to the EPO daily, it's an elegant and powerful communication tool for getting an argument across.


  38. Good stuff Q. I think:

    1) obvious and inventive are antonyms, and

    2) "obvious" means (from the Latin ob via) lying in the road of technical progress. I want the road as far as possible free to all travellers. No roadblocks, but I am willing to allow parties who have built a new road to set up a barrier or a toll booth at the entrance to their new road.

    I think EPO-PSA mimics, objectively, the real life R&D situation, in which i) the boss sets out an objective ii) researcher does individual (subjective) literature search for the optimal starting point X iii) researcher sifts through the art universe, looking (using his/her cgk) for TSM of a way to modify X to get the performance enhancement that is the objective set by his/her boss.

    At the outset, I posited that the nay-sayers are like those who maintain that evolution can't cope with a human eye. Many assert that EPO-PSA, as such, delivers the wrong result but I haven't yet seen anything in the law reports or CIPA J. that proves that EPO-PSA doesn't work. Robin Jacob's attempt simply didn't convince me. Can any reader do better?

    Hello again, Eurodisnae. Welcome. May I ask, who is it that is reversing the burden, and requiring inventors to prove inventive activity? Is it DG3? Can you cite cases. Till then I will assume I can continue as usual, reminding the Boards that I'm entitled to have my claim unless somebody can make good an obviousness attack.

    Hello P. Sorry, but I can't think what to write in reply to yours.

  39. I agree 100% with you Q.


  40. @Norman:
    "Meldrew pointed out that "the section indicating that recognition of a problem, even if the solution is trivial, may be inventive has been deleted in the draft 2010 Guidelines [see C-IV 11.9]." Does anyone know why?"

    I'm surprised that it was completely deleted, but I'm guessing that it has to do with too many patents being granted for obvious inventions because the recognition of the problem was alleged to be inventive, e.g. with (completely unsound) reasoning like "D1 does not mention any problems". The DG3 case law is very restrictive on problem inventions, see e.g. T 971/92, reasons 3.7.1.

    In my view, real problem inventions are very exceptional if they exist at all. If the result specified by the problem formulation is inventive, then it should be possible to reformulate the problem as the technical problem solved by that result (and we don't have a real problem invention, but an improperly formulated problem). If the result does not solve any technical problem, then that result may simply be put in the problem (in line with COMVIK and the many decisions preceding COMVIK that were implicitly/intuitively based on the same principle) and it cannot be inventive. Maybe the result is commercially important and maybe there is no clear reason why it had not been arrived at 30 years earlier, but that does not make a non-technical result technical (let alone inventive).

    (Maybe to make myself more clear: it is very well possible for a technical problem to specify a non-technical result. For example, the problem of adapting a wall to have a green color is a technical problem (with the obvious solution of applying green paint), but specifies a non-technical result. In my view the "theoretically optimal" problem formulation in a given case lies precisely at the border of technicality/non-technicality. In actual practice it's ok to formulate the problem further into "technicality", as long as it remains obvious.)

    I'll be XYZ. And for me, Art. 56 is equivalent to PSA applied properly (which is far from easy).


  41. David, I have to say that there are places in this thread which put me in mind of Alf Garnett on, say, Blacks, sports and music.

    Thus: "Take your Black. Brilliant sportsman, brilliant musician, but only to a particular limit. When it comes to the really sophisticated stuff, you can forget him. Take horse-riding, for example. Ever seen a black rider 3-day eventing, at dressage or show-jumping? Take classical music. Ever seen a black face in the orchestra being conducted exquisitely by that Simon Rattler in Berlin? Or come to think of it, even by that disgraceful scruff, Kennedy, in Warsaw?

    And don't come back at me, son, with all that socialist stuff about chances to practise violin in a rich family background. It's not that. What your Black lacks are the higher motor skills. Take HGV drivers. Try as he might, your Black just can't reverse an artic. How do I know this? Come on now: how many Blacks do you see going in and out of those transport cafes exclusive to long distance lorry drivers.

    I rest my case. It's bleedin' obvious, innit?

  42. I suspect that this thread is running out of steam. I would just like to say that written Decisions which amount to "Obvious. Because I, the judge, happen to think it's obvious!" do the courts no credit, and are the enemy of legal certainty. You don't get that with a decision written in the EPO-PSA co-ordinate system. With that, you get a Decision that is in good shape for testing on appeal.

    Somebody above wrote how difficult it is to get the obviousness issue (of law, or of fact, whatever turns you on) as far as a binary Y/N choice. In this debate about EPO-PSA, we should never forget how, in a 50:50 case like Haberman, the court is going to be right, regardless whether it finds the claim good or bad. So, let's not castigate a TBA just because on the day, insuch a 50:50 case, it found in favour of the other side.

    Instead, let's agree that the EPO-PSA framework, applied consistently and strictly, delivers another plus, namely, the boot-strapping means for its own gradual self-improvement. The sheer number of EPO-PSA Decisions, and the increasingly forensic dissection of them by the profession, will continue to raise obviousness standards in Europe higher than that we see elsewhere in the world, no? When you think that most every patent suit will turn on the obviousness issue, the gain in legal certainty that comes from a strict obviousness approach brings great benefit to the users of Europe's patent system.

  43. In my view, PSA does not replace the question "is the invention obvious", but makes explicit that it is the (technical) solution of a problem that must be non-obvious. You simply can't get a European patent for something that nobody else would ever have thought of, but that does not solve a technical problem.

    Secondary indicia such as long-felt need may be a factor showing that the skilled person would not have come up with the proposed solution, but it cannot replace the requirement that a problem must have been solved.

    For example, it could very well be the case that D2 (disclosing the proposed solution to the problem in the same technical field) is a master's thesis only available from an obscure Chinese university library. People confronted with the long-felt need and seeking a solution in reality never read D2. Still, D2 renders the invention legally obvious.

    "BUT, applicants should not be forced to use PSA as a mechanism for justifying inventive step, because an inventive step need not result from “seeking a solution to an objective technical problem” based on closest prior art that has been determined with hindsight from the subject matter of a claim."

    It is irrelevant how in reality the inventor arrived at the invention. Maybe the inventor was not aware of the prior art at all and invented his invention practically from scratch. It does not matter. He can't get a patent if it was possible to arrive at his invention in an obvious way based on what was known at the priority date.

    So applicants are rightly forced to use PSA as a mechanism for justifying inventive step. Or rather, they must explain why none of the PSA attacks proposed by the EPO or opponent works (or risk getting their application refused or their patent revoked).


  44. Tom:

    "The problem is stains on the carpet."

    No. The problem is defined by reference to the technical effects of the claimed object vs. those of the closest prior art. Thus the problem would be along the lines of "providing a training cup which does not leak when inverted". The problem has nothing to do with the carpet, or your clothes, or "the problem" as you might state it in day-to-day parlance (e.g. "the problem is that existing cups leak").

    It's this fundamental misunderstanding of the meaning of "the problem" which misled Jacob and misleads so many practitioners and commenters. It's why Jacob said "there is no problem" whereas, under PSA, there is ALWAYS a problem because the PSA mandates that one is defined, even if it is just "providing another thing which behaves in exactly the same way as the closest prior art" in a situation where the closest prior art already performs perfectly and has no drawbacks.

  45. David, page 28 of Bingham's "Rule of Law", just published, has a nice quote from Lord Mansfield, from about 200 years ago, about it being in practice even more important, for fostering business activity, that a legal rule must be a clear one (business people need to know whether what they plan to do is or is not lawful) than that the outcome of adjudicating that rule is always correct. Business people need to know whether or not a claim in view does or does not embrace matter which is "obvious". So, in every FTO opinion or "clearing the way" situation, we need a clear way to work that out. Judges can spout about the clarity that comes from cross-examination, but that doesn't help the businessman, or invester in new technology, in the daily demands of making soundly-based business decisions.

    Readers, what do we but EPO-PSA that has the capability to help business people in this way?

  46. Interesting correction in that last para from XYZ. If you the reader think that the EPO (or an Opponent) is forcing you to prove it's inventive, you should be reminding it that it's their job to make out the obviousness case, and once it has been pointed out why it doesn't get them home then the attack has failed and the claim is entitled to be accepted as not invalid. I do really regret how many people (including some wrong-headed EPO Examiners) think the EPC burdens Applicant with a requirement to prove the claim is inventive.

    Education, education, education.

    Training, training, training.

  47. David, I apologise. The quote from Bingham is on page 38 and it's from 250 years ago.

    But it's even better than I remembered. It goes as follows:

    In all mercantile transactions the great object should be certainty: and therefore, it is of more consequence that a rule should be certain, than whether the rule is established one way or another. Because speculators then know what ground to go upon.

    Bingham adds that, in those days, "speculators" were investors and business people.

    As I said above, speculators, as a matter of economic growth, need to know "which ground to go upon"

  48. Anon 8:39 - just to clarify, *I* wasn't saying that that "the problem" was stains on the carpet - the bit you've quoted if from my paraphrase of MaxDrei's explanation of how PSA could be used successfully with the cup example. And as I was arguing that a different aspect of the explanation was flawed, I didn't spend any time worrying about the correctly defining the problem.

  49. Why should a technical problem be the reality, that existing cups leak? Why a problem and why the leak exclusively? For me cups without leak are technical problem (e.g. because they carry out drinking with limited success). I suppose there’s one ‘because’ towards the previous step each time. I’d rather suggest that it’s unworkable to disengage the pure technical problem form the utilitarian context.

  50. Let’s say I’m applying for the first primitive rotating potter’s wheel within the Patent Office of Ur, filing / priority date 3 129 BC. The state-of-art demonstrates coiling technique, but for a PSA derives obviously from this, that the clay should go around by rotating the mat under it. Is the problem in spearing a hand for the potter or in mere transferring the foot shuttle movement into wheel / clay rotating? Why the latter should be a problem, if the potter does not need both hands throwing the ceramic?

  51. @The TradeMarkov's:
    The technical problem is not that existing cups leak (in general), but that the particular cup that forms the closest prior art leaks. And this is the problem not because it is conceived by some as problematic, but because it is what the features that distinguish the claimed invention from the closest prior art achieve (i.e. they adapt the cup of the closest prior art in a manner that prevents it from leaking).

    So in PSA, the technical problem has nothing to do with utilitarianism and/or real-life needs. It has everything to do with WHAT the distinguishing features objectively achieve.

    To find the problem, one should first determine the technical effect of the distinguishing features when applied to the closest prior art. The problem will then be how to adapt the closest prior art to achieve this effect.

  52. More fuel for the thread follows with the following contentions:

    1. For the EPO, if the claim doesn't solve a technical problem with technical features, it isn't patentable. But, if it does, it has got over the Art 52 "technical character" hurdle.

    2. The Haberman cup is the technical solution to a technical problem. That much is trite.

    3. In EPO-PSA, the objective problem is specified by reference to the technical effect delivered by the claimed matter. In Haberman, that might be elimination of trainer cup leaks, or elimination of carpet stains caused by trainer cups. In a claim to a sustained-release form of an old statin, that might be a release that is sustained, or greater patient compliance than with the old statin.

    4. In the formulation of the problem one can utilise only those technical effects that are derivable from the app as filed.

    3. If, at the date of the claim, the notional skilled person had not yet perceived the corresponding objective technical problem, then that perception, so long as it is disclosed in the app by inventor Mandy Haberman, can be a good defence against the obviousness attack on her claim. In Haberman, did the evidence show that the skilled person at the date of the claim was searching for a way to stop trainer cups leaking. When Haberman went to manufacturers, was she not told "Leakage is not a problem"?

    4. But Haberman is a special case. More normally, and very frequently, the attempt to pass off the subject matter of a claim as a "problem invention" is futile, and a waste of the Examining Division's time.

    5. The reason for taking away from readers of the Guidelines the hint or suggestion to try the "problem invention" argument could be because the EPO is weary of it. Indeed, it might (like this thread?) be suffering from "problem invention" fatigue.

  53. I noticed that the current Guide 11.7 says that the examiner should "normally" apply the PSA approach, while the 2010 draft says the PSA approach "should be applied," and "deviation...should be exceptional." It seems that the EPO has become increasingly satisfied with the approach.

  54. Well, I think this long discussion shows one thing: the PSA is like time. I know what it is, as long as nobody asks me to exlpain it.

  55. @ Anon, Sunday, February 21, 2010 7:11:00 PM
    Thanks. I understand your point of view well, and I am sure the examiners’ thinking is supposed to follow this thread. As to the judges, as to the academics, as to the law-makers … (Anon 99 % wrote something on that.)
    In your favour I‘d add there’s no real-life needs every now and then. No need to invent the printing press as far as the closest prior art (re-writing manuscripts by hand) was sufficient for the 50 literate persons in Europe. Reversed, the press created education.
    However, mirror the exceptions to patentability. Is "ordre public" or morality concerning real-life problem or technology? Isn’t this negative feed-back as to the problem of the problem: ‘Do not solve such real-life problems, no matter the fantastic inventive step (of your polluting invention, cloning, plant varieties…)’?
    I agree with MaxDrie 8:33:00, particularly with the EPO "problem invention" fatigue.

  56. @MaxDrei:
    "In Haberman, did the evidence show that the skilled person at the date of the claim was searching for a way to stop trainer cups leaking. When Haberman went to manufacturers, was she not told "Leakage is not a problem"?"

    My position is that it is irrelevant whether it can be shown that people were looking for a solution to stop those particular cups from leaking. The imaginary skilled person is always looking for improvements, and preventing leaks is simply a natural thing to consider. There is nothing inventive in trying to prevent a leak. Furthermore, even if it were true that the manufacturers of those cups denied that leakage was a problem, this is not a *technical* prejudice.

    Btw, from anon of 12:25 (Feb 18) I understand that the Haberman case was actually *not* a problem invention. Indeed, the judgment states:
    "33. There is no dispute that the problem which Mrs Haberman's patent seeks to solve, namely the leakage or fluids from feeding containers, has existed for a very long time. Nor is there any doubt that it was seen to be significant."

    I'm sorry for Jacob LJ, but Haberman's cup has nothing to do with a problem invention.

    Translated to PSA, Laddie came to the conclusion that although at the priority date the solution was known from dripless teats, the skilled person would not have looked there. This he reasoned rather indirectly by looking at the commercial success of the Haberman cup.

    I don't think DG3 would have regarded the cup's commercial success as important as Laddie did, but in principle his reasoning can easily be fitted to the PSA.

    @The Trade Markov's:
    I'd say ordre public and morality are real-life. But that doesn't change that the skilled person and the prior art he has access to are legal fictions and that inventive step is judged on technical merits only. Furthermore, there is no need to discard solutions to immoral problems for alleged lack of inventive step "in the real world", since there already is Art. 53(a).

    Just to be clear (and I'm not sure this where you are trying to go): there is no reasonable way that the EPC could be called "immoral" for not denying an inventive step to inventions that don't pass Art. 53(a). Otherwise you could equally well call speed limits immoral, because they don't outlaw child abuse, etc. It is simply not the intention of the inventive step requirement to filter away inventions that could be considered harmful to society.


  57. I suppose this thread has gone on long enough, but... I've just re-read Pozzoli and realized that it arguably applies the PSA method. The statement of the inventive concept by the trial judge amounts to a statement of the objective technical problem: "the claimed inventive concept was finding a way of reducing the height of the 2:1 container without exposing the discs to serious risk of damage" (para.84) And the key holding was that the solution to that problem was obvious (para. 93, quoted as "the key question" by the CA at para. 56): "the evidence inexorably leads to the conclusion that if you wanted to reduce the height of a 2:1 container, it was obvious to overlap the discs and separate them physically. Working out how to do it would also have been obvious."

    Is that also how the PSA approach would handle it, or have I mischaracterised the "objective technical problem"?

  58. Oh, dear, this blog post is now going to drop off the event horizon. However, 57 comments virtually without abuse is very good indeed. I have certainly stocked up on Pozzoli, Haberman and read a graphic, multicolour representation on PSA.

    Kind regards,

    George Brock-Nannestad

  59. Hello,
    I'm a law student from Poland and I'm currently writing a paper on the conditions of patentability of inventions. I'm actually dealing with the issue of problem inventions right now and I thought that maybe you could tell me what you think about this:

    In the decision T 540/93 EPO decided that an improved door for pets, which prevented pets from hurting their paws while passing through it, was non-obvious. The inventive step of the invention actually consisted in the sole discovering that previously known pet doors would hurt pets' paws, the improvement of those doors being obvious in the light of this newly acquired knowledge.
    This is clearly an example of a problem invention.
    So, I was wondering how this decision could fit with the problem-solution approach, especially what objective technical problem could be established by means of comparing the closest prior art (the old pet doors, I guess) with the invention. IMO it can't be the need to prevent pets from getting their paws hurt because until the invention nobody had known that they did get them hurt, so a skilled person wouldn't consider dealing with this problem. Besides, if this was adopted as the objective technical problem, the solution would have to be considered obvious.
    What do you think? Does the problem-solution approach really simply not apply to the so-called problem inventions?

  60. @Tomasz:
    If one accepts that the formulation of the objective technical problem may sometimes involve an inventive step, i.e. that problem inventions exist (under the problem-solution approach), then it is easy to fit this decision with the problem-solution approach.

    However, it also seems possible to view "prevent pets from getting their paws hurt" as the solution, and then formulate the problem as "how to improve pet doors". Apparently the skilled person, looking for a way to improve pet doors, would not have thought of looking for a way to prevent pets from getting their paws hurt.

    I guess this shows that the formulation of the problem is a quite complicated part of the problem-solution approach. It is always possible to go from "how to improve property X of product Y" to "how to improve product Y". In most such cases, the skilled person, faced with the problem of improving product Y, would naturally consider the problem of improving any property of product Y, including property X. In particular, the skilled person does not need any concrete pointer in the prior art to consider property X out of all imaginable properties of product Y; it is sufficient that the skilled person recognises that property X makes a suitable target for improvement. In the pet door case, the skilled person apparently would not recognise this.

    So when formulating the problem, it is always important to ensure that no potentially inventive ideas are included in the problem. Non-inventive ideas, e.g. non-technical aims or features merely defining an obvious context for the invention, may appear in the problem formulation.


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