Grizzled grandpas and tests for inventive step: the shifting sands of patents in Europe

Rarely has this Kat come away from a conversation with his patent attorney friend Gwilym Roberts (Kilburn & Strode) without feeling that he is fortunate indeed to be an academic and a commentator, since Gwilym can be pretty well relied on to come up with something worth thinking about and then commenting on.  In the piece below, Gwilym ruminates on -- among other things -- how difficult it is to achieve a shift in the test for inventive step in national law, in the UK at any rate, compared with the simple and subtle means by which change may be brought about in the massive territory of the European Patent Convention countries as a whole.  He writes:
Boilerplate Law 
As the latest crop of delighted, disappointed and semi-satisfied candidates receive their EQE exam results and a few more grizzled grandfathers grumble towards retirement, the pool of attorneys doing things "the EPO way" grows ever more dominant, and the continental rather than common law approach to law-making seems to gain sway.

There are still some European
patent attorneys alive today
who pre-date the EQE
The difference between a practitioner trained up through the EQE boot camp and the veterans who had to work it out for themselves can be glaring, as anyone who has faced both types in an opposition will know. The EPO-trained attorney will almost invariably adopt the fairly strict structure applied to paper C of the EQEs, rigorously going through the patent claim by claim, ruthlessly accurate with attacks on dependent claims and terminator-like when ensuring that all available grounds have been applied. Some (not all -- this commentary is not designed to stimulate a grandfather backlash) older practitioners on the other hand adopt a looser, more advocacy-based approach, applying patentability as rigorously as ever, but perhaps concentrating on the main fighting points and in a less structured manner. Both approaches have their merits, and on a level playing field one would hope that the most persuasive argumentation would be successful. But the pool of EPO Examiners is perhaps even more driven towards the EQE-based structured approach such that they recognise and appreciate the template and possibly struggle with the more free-form approach that they decreasingly often meet.

Talking of problems and solutions,
here's Schrödinger’s cat
Another good example is the problem-solution approach ('PSA'). For many years patent attorneys -- especially some British ones -- argued about the legality of PSA altogether. It is not enshrined in the European Patent Convention, and EPO case law is not binding.  The PSA is only found in the Guidelines (although it does, in a primitive form appear in the very first Guidelines). Nobody complains any more about whether the PSA has legal basis; the argument now is simply about how it should be applied, not whether it should be applied. And the approach has become far more structured, once again, through the EQEs.  The test as set out currently in the Guidelines can be broken down into more or less five steps and current candidates are well versed in structuring their inventive step arguments to go through the steps one by one. Here there is perhaps more diversity between recently-qualified and longer-term qualified practitioners as problem-solution seems to have evolved to ever higher levels of rigour, but to see an inventive step argument put forward without use of PSA seems almost unthinkable now.

Whether accidentally or by design, through a structured and consistent approach to setting and marking the EQEs, the EPO has succeeded in effectively changing practice. Informally governing the structure of an opposition statement, or ensuring improved formulation of problem-solution argumentation would seem to be a positive and unchallengeable step; consistency is improved and quality enhanced accordingly.

But where we see an almost subliminal impact on substantive patent law, the situation is different. The PSA is a very good way of making the subjective question of inventiveness as objective as possible, but it has become, de facto, the only way simply because nobody questions it any more.

How the EPO rewrites its Guidelines ...
Viewing the EPO at a administrative body there is no real problem with this; again, it permits consistency and hence quality. Whatever the UK courts may have said in the past, however, the EPO is more than this. It creates legal rights that have an enormous commercial impact in a market of hundreds of millions of people. In the comparatively small jurisdiction of the UK, to change the test for inventive step we would need a Supreme Court decision. In giant Europe it can be done with a minor rewrite of the Guidelines. Common law and continental law may differ in many ways but we need to temper the general success that the EPO has had in building a highly competent profession through EQE training, with a recognition that this should not extend to building new laws through the same route. And it shouldn't just be the old dogs who make that recognition.
Is Gwilym simply sounding off, or has he put his finger on a couple of important issues which, whether we seek to intervene or not, we should at least take the time and effort to appreciate? Do let the IPKat know.
Grizzled grandpas and tests for inventive step: the shifting sands of patents in Europe Grizzled grandpas and tests for inventive step: the shifting sands of patents in Europe Reviewed by Jeremy on Sunday, August 05, 2012 Rating: 5


  1. In my experience of working on biotech applications and patents EPO Examiners tend to get inventive step right. A problem-solution approach might be a first-step in the analysis, but the EPO is quite easy-going about accepting arguments that are not classical 'problem-solution'. EPO case law provides a rich set of principles for argument (hindsight, one way street, prejudice), and the EPO is open to arguments on what the closest prior art and what the actual problem beng solved is. So whilst problem solution does impose some structure, in practice it's not a lot of structure.

    Also one could ask who does inventive step better? The UKIPO is too lenient, the UK Courts too strict. In biotech the USPTO is often too strict and can be overly-formalistic. Australia is too lenient and Japan probably too strict. In China its early days for biotech, but they can be too strict.

    In general I think the EPO does get inventive step right and is as fair as anywhere else.

  2. I welcome the piece and would invite readers to consider the differences between i) law made by EPO-DG3 (in an evolutionary progress of 1000+ Decisions per year) and ii) law made by the once in a while Binding Precedents laid down by SCOTUS (the Supreme Ct of the USA).

    Let's start with eligibility. DG3 has its "technical character" while SCOTUS has "abstract". Can you advise a client whether any particular claim has "technical character"? I think you can, don't you? but can you confidently pronounce when the subject matter of a claim ceases to be "abstract"? You can't, can you?

    Then there's obviousness. First, DG3. Consider a party represented by competent and diligent EPO-savvy counsel. When that party loses, does it ever catch them by surprise? Have you ever sat in Oral Proceedings, as an disinterested member of the public, with no skin in the game? You know what the decision is going to be before it's announced, don't you?

    Now take the USA. if you can tell me, on obviousness, which party will win, you're a better man than I am, Gunga Din.

    What would interest me is to hear from readers who assert that EPO-PSA is incompatible with the English approach to obviousness. As far as I am concerned, you can fit your English case on obviousness into the PSA rubric. If you deserve to win under English Rules, you ought to be able to win on the PSA playing field too, for PSA is simply a device for structuring the debate and keeping it tight and focussed.

  3. If "the EPO has succeeded in effectively changing practice", of course it is much less through the EQE than through the training of the EPO examiners (which has nothing to do with EQE training) and through the decisions of its boards of appeal (which are the basis for the EPO guidelines).

    Sounds like another variation on the theme: "the EPO is the cause of all our problems" and that harmonized law is good only when everybody does like the British. Bad, bad Europe.

  4. Max:

    In my view, PSA is intentionally far better at excluding that which is obvious, than it is in rewarding inventiveness.

    Obviousness is a matter of whether an invention was objectively ob via - whether it was in the path of the notional skilled person, with the teaching of the whole world at his fingertips. Exclusion for lack of obviousness is a matter of principle - to prevent that which was ob via becoming subject to a monopoly.

    To determine whether something is obviousness, it is merely to be assessed whether someone in principle could have come up with the invention without imagination or creativity, rather than whether someone in practice actually did. Something is obvious if an unimaginitive person, who merely learnt from what others had done, and applied what others had taught, could arrive at it in his normal activity. It is a theoretical and objective test.

    The underlying principle is similar to assessment of novelty, which is similarly theoretical and objective.

    For novelty, the test is whether a hypothetical person was able to put the disclosure into effect, regardless of obscurity. The aim is to prevent a monopoly arising on that which anyone could have done freely beforehand, regardless of whether, in practice, many did.

    For obviousness, the test is whether a hypothetical person was able to take two disclosures, however obscure, and apply the relevant teaching of one to the other without creative or imaginative insight. Again, the aim is to prevent a monopoly arising on that which anyone could have done freely beforehand, regardless of whether, in practice, many did.

    Imagine two labs, containing Dr A and Dr B, respectively. They are confronted with different problems in the same field.

    A has chosen to work on a challenging problem, the solution of which is of great importance in the industry. Dr A thinks hard for thirty days straight, and invents, and comes up with a solution. His colleagues are impressed.

    Dr B has chosen a different problem in a similar but not identical situation, not of wide interest, but one that is important to him. He knows he is not very inventive, but also needs a solution nonetheless. So, he spends thirty days straight in the library, diligently reading absolutely everything he can find that might be relevant, until he eventually, on the thirtieth day, finds the answer he needs in an obscure journal.

    It transpires that when Dr B applies his solution to his situation, he also unwittingly solves A's problem, and arrives at the substantially similar apparatus.

    PSA says A cannot have a patent, since the skilled person could have arrived at A's solution in the same way Dr B did, even though the answer was on the basis of an obscure and generally unregarded disclosure, and on the basis of a different problem. Is this right? The solution was certainly ob via for Dr B, with his appetite for reading.

    Now, the EPC is phrased in terms of inventive step. But common law and the PSA both are far more concerned with protecting the obvious from a monopoly than rewarding the inventive with the same. PSA says that Dr B, working on a minor problem by unimaginatively following the teachings of others cannot be prevented from that activity.

    This, I suggest, is a conscious and intentional choice. The EPO would rather preserve the rights of the unimaginative to combine that which is known than to reward personal and real creativity in an inventor. Whether you agree with this position of principle is another matter.

    I tentatively, and finally, suggest that as access to information improves, for example through better search technology, machine translation, expert systems, intelligent agents and the like, the PSA is becoming more, rather than less, realistic as a threshold for patentability.

  5. The thing about PSA that I do not like is that it takes the purported invention out of its context and places it into a synthetic, postulated context that can only be inspired by the knowledge of the present solution combined with the prior art.

    It is quite true that if the combination of technical features of the present solution are obvious from a simple combination of prior art in the postulated context, we have an identity of technical features, and we also automatically have a solution to the original problem, because they share the combination of technical features. But the crux is that somebody has to recognize this, somebody has to see that the present solution is identical to the solution obtained via the postulated context. This does not by itself remove the inventive step from the purported invention, and if the whole combination of features is present in one document, the purported invention it may change into one of a “use” of the combined technical features in the original context. That may or may not be inventive, according to technical prejudices. However, we cannot speak of a “use” if the teachings of two documents are used to obtain the combination of features, because that combination of features has not been seen before.

    In this respect it is very similar to the story about monkeys and typewriters who will accidentally write all of Shakespeare’s works, and in fact even literature not yet written. Nobody knows that they have written Shakespeare’s works until someone recognises the identity between the two strings of characters. In other words, it requires a mind that is able to see the identity in the context of two strings of characters. But somebody also has to recognise the not yet known literature as such.

    I have on prior occasions suggested that the following books be compulsory reading: Kurt Stamm: “Logik im Patentrecht: Objektive Fundamente der Urteilsbildung”, Carl Heymanns Verlag 2002; in the present context pp. 123-153 are very useful. And
    Fritz Dolder: “Erfindungshöhe: Rechtssprechung des Europäischen Patentamts zu Art. 56 EPÜ; Mechanik, technische Physik, Verfahrenstechnik, Werkstoffe“, Carl Heymann’s Verlag 2003; in the present context his critical but objective remarks concerning PSA will be found on pp. 37-46.

    Alas, there are two reasons why these books are not studied, at least not outside Germany, Austria, and Switzerland: they take time away from learning by rote the PSA and they require you to read German.

    George Brock-Nannestad

    P.S. how very appropriate -- one captcha word was 'mucats'

  6. In this debate, let us not lose sight of the need for objectivity. it starts with the notional person skilled in the art. This entity knows all the art but is devoid of any capacity to invent. No real person on Earth exhibits these attributes. So it is futile to muse on what real Inventor A or inventor B would find obvious or inventive.

    The task of the EPO is to examine whether the application fulfils the requirements of the EPC. It must filter out what is old and what is obvious.

  7. A fundamental flaw with PSA is that it assumes that problems lie all around us and our obvious to all. It is only the solution that can be clever. This is quite clearly nonsense to anyone who has spent any time in R&D. The clever step is very often recognising the problem. Its solution may then be relatively straightforward.

  8. ShinyNewEPA: I am quite comfortable with the consequences of the PSA as you describe them. You seem to consider that Dr A, in your example should be rewarded because he exerted inventive activity to solve his problem, because he was too stupid or too lazy or too incompetent to look in the library for the obvious solution. I agree with you that it must be precisely to avoid that kind of absurdity that the PSA was designed. I can't think of a more objective way of determining whether an inventor deserves a reward (monopoly) or not.

    Nevertheless, your statement that "To determine whether something is obviousness (sic), it is merely to be assessed whether someone in principle COULD have come up with the invention without imagination or creativity" is contradicted by the EPO guidelines G-VII 5.3 (June 2012 version) and by the EPO case law:

    "the question to be answered is whether there is any teaching in the prior art as a whole that would (not simply could, but would) have prompted the skilled person, faced with the objective technical problem, to modify or adapt the closest prior art while taking account of that teaching, thereby arriving at something falling within the terms of the claims, and thus achieving what the invention achieves"

    The need for an incentive to combine two pieces of prior art under the PSA should address Mr Brock-Nannestad's concerns as well.

  9. TJ where do you get your information from? One of the earliest cases at the EPo, from about 1981, recognised that patentable invention could lie in the perception of a problem, the solution being obvious as soon as the problem is announced, the invention being in spotting the problem to be solved.

    This jurisprudence has been a fundamental of EPO-PSA, from the very outset.

  10. A fundamental flaw with PSA is that it assumes that problems lie all around us and our [sic] obvious to all.

    If you think so, then you are not applying PSA right.

    To quote the Case Law "bible":
    "In T 967/97 the board stated that the problem and solution approach was essentially based on actual knowledge of technical problems and ways to solve them technically that the skilled person would, at the priority date, be expected to possess objectively, i.e. without being aware of the patent application and the invention that it concerned."

    In short: if the problem wasn't obvious, then even the PSA recognises that the solution must have been inventive. Applying hindsight in the formulation of the objective technical problem is the most common mistake committed in the application of the PSA.

    Mind you, what's good for the goose is also good for the gander, and EPO examiners are also increasingly fond of applying the argument that, if you can't show which technical problem your "invention" is supposed to solve, then it can't be considered to be inventive. Harsh, but not altogether unfair, I think.

  11. The earliest comment from Max D was correct and I got bored reading the nonsense that followed.

    The UK and EPO approaches will achieve identical results if appropriately applied. For those grandfathers in the UK that think otherwise then that is their failing and not the failing of the EPO, the EQE's or the EPC. Get over it!

  12. Of course, not everything that is "inventive" solves an "objective technical problem". Accountants can be very creative, and fiction plots can be very ingenious. Are trhey also to be recognised as fit for patenting?

    Another thing I like about EPO-PSA is that, with it lying in wait to control patentability, you can have a very liberal "technical character" filter for your patent-eligibility test of Art 52 EPC. For how not to do it, just look what an awful pickle they are in, in the USA, wondering how to set their eligibility (35 USC 101) filter.

  13. May I suggest, to those having a subscription to IAM (the magazine), reading the article on page 64 of the September/October 2012 issue ? It's entitled "English law - the odd one out?"

  14. Here's a suggestion, which might stimulate responses: I think UK representatives are squeezed by those of their American corporate clients who (ten years after the filing date, in opposition oral proceedings before DG3) press them with remarks like:

    1. How can they just revoke it? Do they not understand that this patent is an IMPORTAANT ASSET of a world class corporation?

    2. How can they just revoke it? Do they not understand that the claim covers our commercially very successful product?

    I think it ironic, that the very same people who lambast EPO-PSA for being tainted with what they call "hindsight" at the same time expect the EPO to take as the decisive factor in difficult cases ex post facto secondary considerations (such as the commercial success, financial significance, opinion of a hired expert).

  15. Anonymous of 2:35: You are correct: I really must not compose comments on blogs on smartphone keyboards; one letter does indeed make all the difference when discussing PSA.

    My point, I think, stands: once you realise what harm Art 56 EPC exists to prevent in the real world, the PSA test follows. Wether the test is proportionate and reasonable depends on whether you think it is more important that the potential harm should be prevented or real inventors should be rewarded.

    Max: Let us also not lose sight that the skilled person is a legal construct who was created for a purpose and whose characteristics are selected for the legal effect they give. UK judgments are full of reasoning rejecting or approving developments in the image we have of the skilled person because of the consequences that those developments would have in real or theoretical situations. It is therefore useful to imagine extreme but potentially real situations, to see how the law that develops would apply in such situations, and to decide whether those consequences are acceptable to us.

    One problem with the BoA decisions is that they are not so narrative as British judgments, so the underlying philosophy is not so easily exposed.

  16. If anybody is still reading this thread, I should perhaps add some thoughts on "hindsight", for the benefit of those striving to reconcile American ideas of obviousness with European.

    Of course, every person charged with forming a view on obviousness strives with all the powers of concentration at their disposal to "avoid hindsight". That's a given. Where things start to get problematic is when one tries to fix the decisive date, relative to which hindsight starts occurrin'. For the First to Invent Americans, hindsight is anysight after the moment of conception of the invention. Huh.

    For me though, the writing of the claims and the supporting specification is an act that occurs EARLIER in time than the date on which hindsight falls to be decided, namely, the filing date. For me, hindsight happens only when one looks backwards from a point in time after the date of FILING the patent application (or, one day before that filing date, if you want to be picky).

    EPO-PSA is a great aid in the maintenance of the necessary degree of concentration. Think what you do; you rigorously compare the content of just two documents, both of which were written BEFORE the decisive date, namely the filing date. Where's the "hindsight" then, in that simple comparison of just two prior documents?

    Critics find offensive the use of hindsight to select the "realistic starting point" within the prior art universe. But that starting point is one for a notional imaginary skilled person rather than for any real human individual based in a real laboratory in a real corporation in an individual country. Further, it is fixed by what the Applicant says in the specification is the relevant "Technical Field" and "Subjective Problem". The writer of the specification presumably searched the art, and then carefully formulated the field and the problem to the best advantage of the inventor, before sitting down to write the patent application, all on dates prior to the filing of the application.

    And, if no patentability search was done, before writing the appln, ought that to bring advantage to the Applicant. He could (or should, you choose) have done a search first, no?

    With thanks To Stephen Avery, who had a long dialogue over these very issues, in the Letters pages of the CIPA Journal, back in 1985.

  17. A very thought provoking article I'd say... it raises some of the same questions I've discussed with colleagues before in connection with the EPO seeming to want to set the law through policy announcements and 'Guidelines' changes, which then percolate backwards up into 'practice', thus becoming de facto law... possibly even in the long term affecting changes to the very legislation.

    In that sense, is it perhaps ironic that the EPO may be adopting something of a UK 'common law' approach, rather than a more statute based European approach to evolving the law?

  18. Reflecting on whether the thread thus far is helpful or disappointing to the blog, I am prompted to make one more comment, again on the predicament of the UK profession, caught between their American clients and the law-makers of mainland Europe.

    I used to think that English common law Binding Precedent was essential for legal certainty, that on the European mainland one has no idea what the court will decide till it decides, so most every dispute has to go to litigation. Litigation is a last resort in England but a first resort on "The Continent". Self-evidently, English is better.

    But now look at the substantive law of patent validity under the EPC. With 1000+ Decisions per year coming out of the specialist courts of DG3 and not a Binding Precedent to be seen, nevertheless we have more legal certainty than we do in other patent jurisdictions. I don't know about you, but I sometimes find it quite hard to bring US clients round to the view that a particular claim has less than a snowball's chance, at the EPO. They don't understand how I can be so sure.

    Remember all. There is no Binding Precedent at the EPO. If your evidence and written argument interests the Rapporteur from the outset, and convinces a mind willing to understand and synthesise, there is nothing standing in the way of the Board acceding to your Request.

    What do others think?

  19. In response to MaxDrei's most recent comment: yes it's amazing what one can achieve on a case if one represents one's position well. Boards of Appeal can be very good at reaching the right decision by seeing why this situation is an exception to the case law.

    I just wanted to add in response to your reference to there being no binding precedent at the EPO, that there is of course very comprehensive case law as well as 'European practice' which defines a sort of norm for what sort of claims will be allowed. As you mention the great strength of the EPO is the volume of decision-making that the Divisions and Boards do which gives them a tremendous balance in what they allow, as a lot of cross-comparison with other cases will inevitably occur.

    I also wanted to comment that there is nothing wrong with US agents/companies pushing their UK-based European attorneys to defend their cases as best as possible. That's how the system is, and the UK attorneys will have to do their best to defend their clients' interests. Patents are a commercial instrument ultimately.


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