Have you been at the symposium in St. Gallen last Friday, at the occasion of the Swiss FPC’s tenth anniversary? Oh man, what a great event that was! I am still quite inspired by the interesting discussions on the merits — and the joyful chats with so many colleagues, live and vibrant again.
I did not take sufficient notes in order to come up with a thorough summary of the whole day. The following are just some of my very personal take-away messages:
Since the beginnings of the FPC, a total of 56 judgments have been appealed to the Supreme Court; only nine appeals have been allowed, fully or in part. Such a 16 percent reversal rate is indicative of the (very) good quality of the first instance judgments of the FPC.
Some discussions circled around the disposal of cases by settlement. Dieter BRÄNDLE referred to it as the finest way of concluding a case («edelste Variante der Streitbeilegung»), for good reasons. However, settlements have become pretty rare in recent years; see the statistics here. This is most likely due to the fact that many cases are just tiny puzzle pieces in multi-jurisdictional patent fights which are not easily settled. Some courts do apply «shuttle diplomacy» in their settlement efforts (sometimes confused with «Einzelabreibungen», i.e. anything but truly diplomatic approaches to push / threaten the parties into a settlement). But it became very clear that the FPC will not try «shuttle diplomacy» in the near future.
The «Saisie Helvétique», a precise description of a presumably infringing embodiment, has not been used very often in more recent times. Why is that? Some said that parties might opt for a PI right away, instead of securing (further) evidence of the last tiny bit of infringment beforehand. Further, a precise description is anyting but cheap, and there may well be other options in particular in an international setup which are more favorable to secure evidence (e.g. a saisie-contrefaçon in France).
On the procedural side, it was discussed whether it should be possible for a plaintiff to base a PI request on the patent in suit in various versions, i.e. with a whole cascade of auxiliary inter partes limitations — or whether that inherently contravenes the necessary urgency. Indeed, I feel it may sometimes be a wise approach in PI proceedings to envoke the patent only to the extent necessary to precisely cover the attacked embodiment; one may still pursue the case more broadly in subsequent main proceedings anyway when time is not so much of the essence anymore (with a PI in place). It will be interesting to see how the FPC will henceforth deal with (too?) many inter partes limitations in PI proceedings.
On the merits, we discussed whether it is (or should be?) possible to just disregard a particular piece of prior art as closest prior art in the assessment of obviousness right away (simply because it is too unrelated to the invention), or whether anything has to be assessed in civil proceedings simply because a party pleaded it. It appears that this question had never been critical in judgments of the FPC by now; but it is still important to know that there is no settled case-law in this respect (see this Blog here).
Further, we briefly touched the formulation of the ‘objective technical problem’ and whether the ‘Swiss finish’ in some judgments is appropriate, i.e. that the problem should be somehow addressed in the closest prior art. See this Blog here for a more detailed discussion of this issue.
Oh, and one should maybe keep this pointed remark of Sir Colin BIRSS in mind when discussing a controversial judgment:
If you ever felt that arguing / pleading a case is difficult; believe me, judging that case is harder.
With respect to the UPC, it became clear that quality of its judgments will be the (most) critical issue for users. Anyway, the UPC will have to deal with this well-known triangle just like any other service provider:
service triangle
The UPC’s goal of 12m for main proceedings was considered as very (unrealistically?) ambitious. Quality will largely depend on the judges; the hiring is currently underway. The goal is to have not too many judges in the beginning (only 50 technically trained judges), both for cost reasons and to ensure that the judges have enough cases to gain experience.
Re opting-out, Beat WEIBEL of Siemens provided some statistical insight: They will opt out for 17.3% of Siemens’ entire portfolio.
The initially published version of the above paragraph erroneously mentioned an opt-out ratio of 12.7%. I confused my notes. The paragraph has been corrected; the correct value is 17.3%
/MW
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Tagung zum 10-jährigen Jubiläum des Bundespatentgerichts am 6. Mai 2022, Panel zur Rechtsprechung des Gerichts mit Thierry Calame, Michael Ritscher, Mark Schweizer, Andrea Mondini und Martin Wilming (v.l.n.r.) pic.twitter.com/iK7OBgXuUK
The decision is a booklet of about 100 pages; even the recitals of the procedural history and the requests cover 37 pages. Cutting a long story short, the FPC held that some of imtmedical‘s Bellavista ventilation machines with the ‘Animated Lung‘ feature infringe Hamilton Medical‘s EP 1 984 805 B1; see EPO Register and Swissreg for further bibliographic information.
Defendant argued for nullity of EP 805 in defense, as follows:
Claim 1 was not novel over both WO 02/071933 A2 (see ¶ 56) and Wachter et al. (2003), The employment of an iterative design process to develop a pulmonary graphical display (see ¶ 57);
and, with respect to (lack of) inventive step (see ¶ 67):
However, the plea for nullity in defense was unsuccessful. The decision holds that features 1F [b] and 1F [c] were not disclosed in WO 02/071933 A2 and Wachter et al. (2003); thus, novelty was acknowledged. Further, the decision holds that features 1F [b] and 1F [c] were also not rendered obvious by any combination of prior art asserted by defendant.
Claim 1, broken down into features
The decisive features re novelty and inventive step are highlighted.
1A
A device with a screen
1B
in order on this to represent acquired, changing values with a mechanical ventilation of a patient,
1C
with means for acquiring at least three changing values of different origin,
1D
[a]
and means for representing the values,
[b]
which permit the acquired values to be qualitatively represented together on the screen
[c]
in a single element
1E
[a]
said graphical element including
[b]
a pictorial representation of a lung shape,
[c]
a current design of the lung shape containing qualitative information on the compliance of the lung,
characterized in that
1F
[a]
the means for representing [the] values are designed such
[b]
that a volume change of the ventilated lung which is acquired with each breath, is represented in an animated manner
[c]
by way of a size change of the lung shape corresponding to this volume change,
[d]
involving an animation of a contour line of the lung shape,
[e]
the design of which containing qualitative information on the compliance of the lung.
The defendant was thus ordered to abstain from further use of ventilation machines with the ‘Animated Lung‘ feature, and to provide information and accounting concerning previous use thereof.
All that appears pretty straight-forward to me, even though the prior art comes pretty close. But still, there are some quite pointed remarks in the decision on various aspects, both procedurally and on the merits.
Lack of legal interest in certain requests for injunctive relief
In parallel to the requests for injunctive relief that had finally been allowed, the plaintiff also requested essentially the same again in more limited form, i.e. with i) the additional recitation of the machine types ‘bellavista 1000’, ‘bellavista 1000e’ and ‘bellavista 1000 neo’; and ii) the combination with certain flow-through sensors.
The decision holds that the plaintiff has no legal interest in these requests since the broadest request already cover these more limited requests. Noteworthy, 20% or the costs were clapped on the plaintiff despite his success on the merits with respect to the broadest requests.
The requirement of definiteness of a request for injunctive relief
The decision gives a finely chiseled differentiation of the requirement of definiteness of a request for injunctive relief on the one hand (which is a bar to proceeding, to be examined ex officio), and the plea in defense that the request for injunctive relief is overhooting on the other hand, i.e. that it extends beyond the scope of the patent as asserted (not to be examined ex officio; potentially leading to (partial) dismissal of the action):
Interestingly, the decision holds in very general terms that the FPC will only very reluctantly assume indefiniteness of a claim for injunctive relief, in the absence of a respective complaint of the defendant; see ¶15, above.
Further, it is held that an overshooting request for injunctive relief will lead to ‘(partial) dismissal’ of the action; see ¶15, above. Maybe I am overinterpreting the ‘partial’ in brackets here, but I wonder what that means in practice: In first place, the request for injunctive relief stands as requested — and cannot be allowed as-is because it is overshooting. In principle, I believe that the court could re-phrase the request to make it commensurate with the scope of the patent as asserted (even though that might be a tricky exercise). Similarly, see e.g. the hn in O2015_009 with respect to sole vs. joint ownership of a patent application. As much as I recall, the FPC never actually narrowed down an overshooting request for injunctive relief, to make it commensurate with the patent as asserted.
A broad feature is not necessarily unclear
Broadness of features is frequently confused with (un)clarity, in particular when it comes to functional features. The decision holds in no uncertain terms that this is a misconception; see ¶16:
Der Begriff ‘Gerätesteuerung’ ist ein funktionaler Begriff, der alles umfasst, was das (Beatmungs-)Gerät steuert. Nicht jeder breite Begriff ist automatisch unklar. Der Begriff ‘Gerätesteuerung’ ist zwar breit, aber klar.
By the way, the same holds true in prosecution: I am prepared to deal with any prior art that is thrown at me as long as it reasonably reads on a broad, functional feature. But it goes against the grain for me when an objection re clarity is raised presumably only for convenience.
Admissibility of reply to new assertions in the rejoinder
The defendant apparently came up with a whole lot of new assertions only in the rejoinder, i.e. that i) EP 805 extended beyond the application as originally filed; ii) the invention was not disclosed in a manner sufficiently clear and complete for it to be carried out by a skilled person; iii) the attacked embodiment did not provide qualitative information with the contour line of the lung; and iv) that the claim to priority was not valid, alongside with new evidence and reliance on a witness.
The decision holds that plaintiff’s filing of new pieces of evidence had effectively been triggered by the rejoinder, and the evidence was thus admitted into the proceedings; see ¶19:
The defendant had requested that Mr Frank DREWS be heard as a witness. To no avail. The decision umistakably holds that witnesses are not to be heard with respect to questions of law, such as e.g. the definition of the skilled person, the issue of technicality (see below), or the skilled person’s understanding of certain features; see ¶21:
Vorab ist festzuhalten, dass Zeugen zu Tatsachen befragt werden, nicht zu Rechtsfragen.
Further, the decision holds that the procedure of taking evidence (Art. 150 et seqq. CPC) cannot replace lacking allegations or supplement incomplete allegations. Rather, appropriate allegations are the prerequisite for the taking of evidence (see ¶20, with reference to 4A_338/2017, ¶2.1):
Das Beweisverfahren dient […] nicht dazu, fehlende Behauptungen zu ersetzen oder zu ergänzen, sondern setzt solche vielmehr voraus.
The decision holds that defendant’s reliance on Mr Frank DREWS as a witness did not meet this standard. Accordingly, the witness had not been heard.
The FPC follows the EPO’s ‘Comvik’-approach
In EPO practice, a so-called mixed invention that comprises both technical and non-technical features is assessed according to the ‘COMVIK’ approach, in accordance with T 641/00 (Two identities / COMVIK). In a nutshell, an invention is not excluded from patentability under Art. 52(1), (2) EPC when it comprises at least one technical feature. This threshold is easily met; mere presence of e.g. a computer, a display, etc. is sufficient to pass the test. However, those features that do not have (or contribute to) a non-obvious technical effect cannot render the claimed subject-matter inventive.
Note that the IPI applies a different test, according to the IPI Guidelines for Examination (January 2019, p. 16):
The IPI applies a ‘holistic’ approach (‘Ganzheitsbetrachtung’) in the assessment of technicality of the claimed subject-matter. In contrast to the EPO’s ‘COMVIK’ approach (T 641/00), this means that e.g. a claim directed to e.g. an method for analysis of certain items that is carried out with the help of a computer may well be refused by the IPI for lack of technicality (if it can e.g. be used for both technical and non-technical purposes), while the mandatory use of a computer would establish technicality at the EPO in any event. Whether or not the method would ultimately be considered inventive or not by the EPO, that’s of course a different story.
The decision holds that the FPC will apply the ‘COMVIK’-approach, and it is noted in passing that it will also do so for Swiss national patents; see ¶ 46:
Being trained as a European patent attorney, I had always felt that the ‘holistic’ approach was examination on the merits in disguise. In order to properly assess these criteria, one necessarily has to consider the invention as claimed in light of the prior art — what in my opinion is not sth the IPI should currently be doing (but maybe in the future; see this Blog here). I feel that time is ripe to abolish with the ‘holistic’ approach / ‘Ganzheitsbetrachtung’. It appears odd to me to systematically apply two different approaches in prosecution and nullity proceedings, in the mere hope that in the end the overall result re patentability might be the same, i.e. that non-patentable inventions are sorted out in any event, just by a different token.
On a sidenote, the decision discusses the different approaches being taken by Boards of Appeal in the assessment of novelty of mixed inventions; see ¶54. Nowadays, the majority considers all features in the assessment of novelty, irrespective of whether they are technical or not. Some other decisions apply the concept of ‘technical novelty’, i.e. only technical features are considered in the assessment of novelty; see also the discussion in Case Law of the Boards of Appeal, I.D.9.1.3 c), second paragraph. In practice, that only matters when intervening prior art under Art. 54(3) EPC is at stake — which is not the case here. Anyway, the decision rightly holds that consideration of all features in the assessment of novelty would be pragmatic since only the new features would have to be assessed re technicality in the next step; if a feature is not new, it just doesn’t matter whether it is technical or not.
burden of proof for the actual fulfillment of an ambitious technical problem in the assessment of inventive step
The decision raises an interesting question in relation to the assessment of inventive step; see ¶65. Just assume that the patent in suit asserts that an ambitious technical problem is solved by the invention. Later, in civil proceedings and in view of the same prior art as discussed in the patent in suit, the counterparty asserts that this ambitious technical problem is not solved. Now, is the burden of proof on that issue with the patentee or the counterparty?
That’s a tough question, indeed. The decision avoids to give an answer; the FPC could do so in the case at hand because the invention was held non-obvious even in view of the least ambitious technical problem to be solved.
That’s definitely lawyers’ playground. But in my perception, neither party should benefit from a mere ‘sit back and relax’ mentality in such instances. Assuming there is at least some reasonable indication (in the patent itself or through secondary evidence) that the ambitious technical problem is actually solved, I would see a burden on the counterparty to overturn this circumstantial evidence, with at least the same degree of certainty. It would appear somewhat artificial to me if the full burden of proof would be on the patentee right from the outset. Similarly, according to Art. 178 CPC, the authenticity of a document needs only to be proven when disputed, and when adequate grounds for disputing are given.
No plea OF free state of the art in case of literal infringement
The decision holds that the defendant cannot argue as a plea in defense that the attacked embodiment is free state of the art (or rendered obvious by the free state of the art). This plea effectively is a nullity plea in defense (asserting lack of novelty or inventive step, respectively), and to be examined as such.
With reference to O2013_008 (¶4.6), the decision holds that the plea of free state of the art can only be legitimately raised in order to rebut the assertion of infringement under the DoE, but not in cases of literal infringement.
But … why?
I am not so sure. Does it really have to be so dogmatic?
Assuming a defendant can show that the attacked embodiment is an exact blueprint of what has been described 50 years ago. Undoubtedly, no valid patent that is currently in force can cover the attacked embodiment anymore. Not the patent in suit, and not any other one. Why bother with a detailed feature analysis and all the tedious questions of claim construction in the assessment of nullity? There is just no need for that. One may construe the patent in suit in any way whatsoever: It cannot be valid and at the same time read on the attacked embodiment.In view of procedural economy, it would make perfectly sense to shut the docket based on the plea of free state of the art, in my perception. See e.g. BGE 115 II 491 (¶2b) and F. Blumer in sic! 1/1998, p. 3 et seqq. in this respect, and Eugène Brunner’s critical comments in sic! 4/1998, p. 428-429 (with which I do not concur, for e.g. the reasons outlined above).
Information on downstream commercial customers
The decision holds in ¶86 that the identity of downstream commercial users and the extent to which the infringing products had been passed on to them is not a secret worthy of protection once infringement is established; the interests of the patentee take precedence (Art. 66 lit. b PatA):
Die Identität der gewerblichen Abnehmer und das Ausmass der Weitergabe von patentverletzenden Produkten an sie ist bei nachgewiesener Patentverletzung kein schützenswertes Geheimnis; die Interessen des Patentinhabers gehen vor (Art. 66 lit. b PatG)
This principle had been established in O2013_008 (hn), but the recent decision O2016_012 appears to be at odds with this, at least at the face of it; see O2016_012, ¶102.
The value in dispute of an action by stages
The decision discusses the issue of the value in dispute in an action by stages (see ¶92): Should the value in dispute in patent infringement proceedings be fixed based on the first stage only (i.e. information / accounting and injunctive relief), or should the aggregate (monetary) claim that is subsequently dealt with in the second stage of the proceedings also be taken into account?
The decision opts for the latter. If a complaint is dismissed, this also implies dismissal with respect to monetary claims; it would thus be inconsistent if the value in dispute would be systematically addressed differently only because the outcome of the proceedings is different on the merits. However, the court fee is fixed to only CHF 70’000,– which is even less than what the tariff at the lower end would allow for in Art. 1(1) CostR-PatC in view of a value in dispute of CHF 4m, in consideration of the fact that it is only a partial decision that not yet deals with the monetary claims.
Defendant (1) is the Austrian manufacturing company of the allegedly infringing ANA.NOVA® hybrid socket, which defendant (2) is then placing on the Swiss market.
Partial waiver of the patent
Stemcup’s logo
The plaintiff partially waived EP 869 at the IPI, to overcome the judge-rapporteur’s finding in his expert opinion with respect to a presumably undue extension of subject-matter. The partial waiver has thus been filed at a very late stage of the proceedings, i.e. only after formal closure of the file and only about nine months after the defendant’s rejoinder wherein the undue extension of subject-matter had been asserted.
The partial waiver has been published on 15 August 2018. Independent claims 1 and 2 now read as follows (inofficially translated; changes marked-up):
Claim 1
A joint prosthesis (1) with a base body (10) for knocking into a bone, characterised in that there are arranged at least two locking elements (20) on the outer side of the base body (10) which in each case comprise at least one knock-in web (21) which from the distal web beginning up to the proximal web end defines at least a continuous, linear gradient of 85° to 60° with respect to the base surface (GP), which corresponds to an angle of twist of 5° to 30°.
Claim 2
A socket (1) for an artificial hip joint with a base body or a shell (10) which comprises an in particular spherical, ellipsoidal or conical superficies (11) essentially rotationally symmetrical to the socket axis (AP), characterised in that on the outer side of the base body (10) there are arranged at least two locking elements (20) which in each case comprise a knock-in web (21) which from the distal web beginning up to the proximal web end defines at least a continuous, linear gradient of 85° to 60° with respect to the base surface (GP), which corresponds to an angle of twist of 5° to 30°.
Noteworthy, the plaintiff’s statement of claim had not been changed, and no new factual allegations had been brought forward. The parties heavily disagree on whether or not the partial waiver of the patent at this stage of the proceedings was admissible as a novum according to Art. 229 CPC, and whether the plaintiff’s conduct was in good faith; Art. 2 CC.
The decision holds that the plaintiff made use of a possibility that is explicitly provided for in Art. 24 PatA, and that this partial waiver is effective ex tunc, i.e. the patent is treated as if it had been granted only to that extent from the outset. This is a new fact within the meaning of Art. 229(1) lit. a CPC (proper novum), because the patent in that limited form was only created after the formal closure of the file. The fact that the plaintiff could have requested the partial waiver with the IPI well before the closure of the file, or that the partial waiver represents a new fact created by the plaintiff himself, does not change anything in this respect. Art. 229(1) lit. a CPCdoes not regulate how or by whom a new fact must have arisen or been created for it to qualify as a new fact. The emergence of a fact after the conclusion of the exchange of letters is the only necessary and thus sufficient condition for a proper novum.
Further, the decision holds that a new fact has actually arisen which did not exist before: The plaintiff’s patent in the original version no longer exists, but the plaintiff’s patent in the partially waived version has been newly created. This is why the proceedings have not become devoid of purpose, as the defendants argued; this would only be the case if no patent existed at all anymore. In the FPC’s view, it must be possible to take into account new developments concerning the facts on which the action is based; otherwise the proceedings will just miss the point. In addition, the decision holds that consideration of the partial waiver is proper for reasons of procedural economy: If the partial waiver was not permitted as a proper novum, the FPC would have to hand down a meaningless judgment because it assesses the legal situation on the basis of a patent which no longer exists in that form.
The decision also emphasizes that the patent after the partial waiver fits smoothly into the subject-matter as it was already discussed in the proceedings, and the parties’ right to be heard had well been observed.
Further, the FPC assessed whether introduction of a new fact created by the plaintiff himself after closure of the file was an abuse of the possibilities foreseen in Art. 229 CPC. The decision holds that this is not the case since the partial waiver pursuant to Art. 24 PatA was expressly provided by the legislator, without limits. However, the fact that the plaintiff requested the partial waiver only after the judge-rapporteur had already established his expert opinion was taken into account in the apportionment of costs: 1/3 is to be covered by the plaintiff, despite his success on the merits.
Finally, the FPC did not share defendant’s concerns that patentees would henceforth trigger new expert opinions on a rolling basis, as long as the result is not (yet) favorable:
Schliesslich ist noch auf die Bemerkung der Beklagten einzugehen, wonach es im Interesse des Patentgerichts sei, zu sagen, wann fertig sei. Sonst könne der Patentinhaber ja beliebig oft zuerst sich vom Fachrichter eine Beurteilung holen und dann wieder einschränken, und dann nochmals eine Beurteilung und dann nochmals einschränken. Irgendwann müsse mal Schluss sein, das sei Sinn und Zweck von Fristen und der Novenregelung.
In short, as Giovanni Trappatoni would likely put it: Defendants argued that, after the formal closure of the file, it is time for the court to say …
However, the FPC notes (again) that the expert opinion of the judge-rapporteur in no way anticipates the final judgment. The patentee thus runs the risk that the partial waiver at the IPI, which is final and binding, could be in vain or even counter-productive. Further, it is not carved in stone that a second, revised expert opinion will be established.
All this is definitely lawyers’ playground. But in my opinion as a patent attorney, the FPC took a non-formalistic, pragmatic approach — which I like. However, not all judges were comfortable with it; see below.
Undue extension of subject-matter
Defendants objected that the partially waived patent was unduly amended both in terms of Art. 123(2) and Art. 123(3) EPC. Those issues are always very case-specific, and I do not believe that it is worthwile to dive deeper here, at least for the time being. In short: The FPC did not buy defendants’ arguments.
Novelty
The decision acknowledges novelty over FR 1 781 363 (D1; see e.g. Fig. 1) and an apparently corresponding product, ‘Equateur’ (D2):
DE 196 06 057 (D5) and an (allegedly) arbitrary selection from a parameter range;
DE 196 06 057 (D5) in further view of FR 2 641 461 (D6) and, again, an (allegedly) arbitrary selection from a parameter range.
Urteil vom 28. Okt 2019 i.S. Stemcup v. Implantec u.a.: Verletzungsklage teilw. gutgeheissen nach Teilverzicht beim IGE nach Aktenschluss, https://t.co/9uRhOC6BZa
I have no strong opinion on the actual outcome, i.e. whether the claimed subject-matter was obvious or not. However, some minor flaws in terminology will likely add to the ‘land of confusion’ re obviousness. For instance, I just don’t get what is meant with
naheliegende Veranlassung
(obvious motivation / pointer) in ¶84. Is this intentionally demanding for more than mere existence of a motivation or pointer? Does the motivation or pointer itself have to be obvious, too; and not only the claimed subject-matter as such? I hope not so.
Further, I do have some methodological concerns.
i) Motivation and reasonable expectation of success?
The FPC has repeatedly committed to apply the EPO’s problem-solution approach, at least as a rule. Even though the present decision does not reiterate this, I have no reason to assume that it is an exception to the rule.
The decision provides a very concise summary of how obviousness is to be assessed (¶60, emphasis in original), presumably according to the problem-solution approach:
Damit mangelnde erfinderische Tätigkeit begründet werden kann, muss gezeigt werden, dass ausgehend von einem als Ausgangspunkt gewählten Dokument des Standes der Technik eine Motivation bestand, die erfindungsgemässe Änderung vorzunehmen, und dass angemessene Aussichten auf Erfolg bestanden, dass eine solche Modifikation auch die erfindungsgemäss vorteilhafte Wirkung nach sich zieht.
It is not the first time that I am troubled by this standard; see e.g. this Blog here and here. In S2017_001 (¶4.7), reference had been made to Kroher (Singer/Stauder, EPÜ, 7th ed., Art. 56, ¶73-74) in this respect, but this reference is not convincing for at least the reasons given on this Blog here.
Now, the present decision does not give any reference anymore.
The EPO’s problem-solution approach does not require the assessment of a reasonable expectation of success. The Guidelines are clear in this respect. It was only in the most recent 2019 edition of the Guidelines that the ‘reasonable expectation of success’ has first been mentioned in the context of obviousness at all (G-VII, 13), as follows:
According to the title, this mentioning of a ‘reasonable expectation of success’ is being made exclusively for the ‘field of biotechnology’. And, what is more, the Guidelines correctly discuss three level of confidence with respect to the results, i.e.:
clear predictability;
reasonable expectation of success; and
mere ‘try and see’ attitude.
Even for the lowest level of confidence, i.e. the mere ‘try and see’ attitude, it is held that this does not necessarily render a technical solution inventive. Rightly so; this is in full conformance with the established case law of the Boards of Appeal; see here.
Now, think about it:
On the one hand, in view of ¶60 of the decision, it is an absolute show-stopper (“[…] muss gezeigt werden, dass […]”) for a plaintiff in nullity proceedings if he cannot establish a ‘reasonable expectation of success’; while
on the other hand, in accordance with the established case law of the Boards of Appeal, even a ‘try and see’ attitude may well have carried the day for an applicant / patentee before the EPO.
This cannot be it.
In my perception, the criteria as defined in ¶60 are not in accordance with the problem-solution approach as it is applied by the first instance bodies of the EPO (which mandatorily apply the Guidelines) and as it is interpreted by the Boards of Appeal. The ‘reasonable expectation of success’ clearly is not a cornerstone of the problem-solution approach per se (not to mention beyond biotech) — contrary to what the general emphasis in ¶60 of the decision suggests, as well as the frequent repetition in the individual assessment of attacks (¶64, ¶73, ¶84).
Don’t get me wrong, I am not saying that the requirements defined in ¶60 are unsuitable for the assessment of obviousness in accordance with Art. 56 EPC and Art. 1(2) CH-PatA. It would just not be the EPO’s problem-solution approach as I know it. Rather, this interpretation of the problem-solution approach would effectively lower the bar for patentees: A mere ‘try and see’ attitude would inevitably lead to a finding of non-obviousness — contrary to EPO practice.
Notably, the same issue had been a sideshow in S2019_007; see this Blog here. In that case, it had essentially been held that ‘reasonable expectation of success’ is not necessary if the skilled person has an incentive for any other reason. The skilled person will then just take the necessary steps towards the invention unless he has to assume that this is hopeless right from the outset. I do concur with this.
ii) What is not mentioned or suggested in the closest prior art must not be considered in the context of the objective technical problem?
The decision holds that a certain aspect must not be considered in the context of the objective technical problem because this aspect is not mentioned in the closest prior art; see ¶74, second paragraph:
Der Aspekt der Verdrehung ist entsprechend etwas, was der D5 nicht zu entnehmen ist, darf also auch nicht im Rahmen der Aufgabe berücksichtigt werden.
In my perception, it is indeed correct to not recite this specific aspect in the wording of the objective technical problem. But this is not because this aspect is not disclosed in the closest prior art. This is just irrelevant. Rather, it must not be recited in the wording of the objective technical problem because it would be a pointer towards the solution, and this is what the EPO Guidelines on the problem-solution approach prohibit (G-VII, 5.1):
[…] one establishes in an objective way the technical problem to be solved. To do this one studies the application (or the patent), the ‘closest prior art’ and the difference (also called ‘the distinguishing feature(s)‘ of the claimed invention) in terms of features (either structural or functional) between the claimed invention and the ‘closest prior art’, identifies the technical effect resulting from the distinguishing features, and then formulates the technical problem. […]
It is noted that the objective technical problem must be so formulated as not to contain pointers to the technical solution, since including part of a technical solution offered by an invention in the statement of the problem must, when the state of the art is assessed in terms of that problem, necessarily result in an ex post facto view being taken of inventive activity (see T 229/85).
The latter is the reason for non-consideration of the specific aspect in the formulation of the objective technical problem. It has nothing to do with the closest prior art.
See also the discussion about a similar issue on this Blog here.
InFRINGEMENT
The tricky issue is the gradient of the knock-in web of 85° to 60°. In a nutshell, the decision holds that, in accordance with the patent in suit, the gradient is to be measured with the so-called ‘optical method’. Further, based on the evidence submitted by the plaintiff, the decision holds in ¶94 that the gradient in the attacked embodiment is within a range of 84.31 – 85.04°, and that at least two knock-in webs feature a gradient below 85°. Apparently, this was also supported by defendants’ own submissions. However, defendants argued that their knock-in webs were curved, not linear; and that it was thus not possible to rely on the ‘optical method’. However, the decision holds that the curvature, if it existed at all, was de minimis (¶95).
The decision holds that there is literal infringement. As a consequence, the second request for injunctive relief was allowed. The primary request for injunctive relief, that extended beyond the range of the claim in an attempt to cover infringement under the DoE, was denied for lack of legal interest in the assessment of a request that reached beyond the wording of the claim (83° to 86.5°).
Request for information on Downstream commercial users
While the request for production of accounting information about defendants’ own net sales and gross profit was allowed, plaintiff’s request for information about downstream commercial users was denied. The decision holds that no reasoning / legal interest in this information had been established, and the defendants’ interest in secrecy prevailed:
[Es] wird bezüglich der Erforderlichkeit von Angaben zur Identität der gewerblichen Abnehmer und das Ausmass der Weitergabe von patentverletzenden Produkten seitens der Klägerin keinerlei Begründung oder rechtliche schützenswertes Interesse angeführt, sodass das von den Beklagten geltend gemachte Geheimhaltungsinteresse in diesem Punkt zu berücksichtigen ist.
Frankly, this is somewhat surprising to me. I had assumed that, once infringement was established, a plaintiff was entitled to such information simply by virtue of Art. 66 lit. b PatA; cf. O2013_008, hn and ¶5.4 (emphasis added):
[H]insichtlich des zivilrechtlichen Schutzes [kann] der Beklagte verpflichtet werden […], Herkunft und Menge der in seinem Besitz befindlichen Gegenstände, die in Verletzung des Klagepatentes widerrechtlich hergestellt oder in Verkehr gebracht wurden, anzugeben und Adressaten sowie Ausmass einer Weitergabe an gewerbliche Abnehmer zu nennen. Dieser materiell-rechtliche Anspruch auf Auskunftserteilung und Rechnungslegung besteht bei Vorliegen einer Patentverletzung zunächst unabhängig davon, ob die Patentinhaberin die Grundlagen eines Anspruchs auf finanzielle Kompensation aufgezeigt hat.
The present decision does not make any reference to O2013_008. What a pity! It would have been very interesting to learn more about why the request for information about downstream commercial users was denied in the present case, despite the ratio decidendi of O2013_008.
Dissenting opinion
It is for the first time that a decision of the FPC comes along with a dissenting opinion attached to it, in accordance with Art. 13(3) of the Regulations on the FPC. Interestingly, the dissenting opinion had not yet been attached when the decision was first published on 13 November 2019; see here.
Neither the actual split of the panel (4:1 or 3:2) is disclosed, nor the name(s) of the dissenter(s). Admittedly, I am bursting with curiosity. However, I do appreciate that this is a way to preserve the judges’ independence; see e.g. the 2012 Study on behalf of the European Parliament on Dissenting opinions in the Supreme Courts of the Member States; p 37, ¶ 3.3.5, last paragraph.
UPDATE 4 December 2019:
It had been mentioned at the occasion of the INGRES conference on 3 December that the actual split of the panel was 3:2.
Clearly, the procedural question of whether or not the partial waiver is to be considered in the proceedings at such a late stage is a highly interesting one. The decision itself expands on this issue pretty exhaustively on about six pages, and finally admits the partial waiver into the proceedings; see above. On the other hand, the dissenter(s) — in an opinion which is twice as long! — would have thrown the case out entirely (¶13 of the dissenting opinion, loosely translated):
[T]he minority of the judges takes the view that the [partial waiver] cannot be accepted as a novum in these proceedings. The partial waiver cannot be considered as a proper or improper novum within the meaning of Art. 229 para. 1 CPC. Moreover, the plaintiff’s conduct is also contrary to good faith. Accordingly, the complaint is not to be considered. The plaintiff has no legal interest in having the infringement of a [patent claim] examined by the court which is no longer in place and which has never had effect from the outset (cf Art 28a PatA).
On a separate issue, I do not readily get the point of ¶14 of the dissenting opinion. On the one hand, the minority argues that proceedings for taking evidence would be necessary in order to properly assess the question of infringement, because the court lacks the appropriate measuring instruments for a reliable determination. On the other hand, the minority also acknowledges that the burden of proof is with the plaintiff in this respect(?).
Now, let’s see what the Supreme Court does with all this; I have no reason to assume that this decision will not be appealed.
On the funny side
Last but not least, I stumbled upon the following in ¶77 (with my personal annotations on a working copy of the decision):
What the heck … ?!offset screwdriver
I cannot help but think about what is probably the most versatile item in my toolbox: The offset screwdriver (‘Winkelschrauber’ in German).
Oh, if only the skilled person had had an offset screwdriver at hand, to fiddle with the angle of approach! But, maybe, the skilled person might still have screwed things up …
The inventions are all about the capacitive testing of yarns or fabric, wherein the dielectric property of a capacitor arrangement is determined.
Patentability
It became clear from the pleadings that the defendant’s main request in both cases was that the patent be maintained in amended form only. In my understanding, the expert-opinion of the judge-rapporteur had held that the main request in O2016_010 / EP’250 was allowable, but not in O2016_011 / EP’018.
Novelty has not been an issue anymore, in both cases. Only obviousness, undue extension of subject-matter (interim generalisation) and clarity (of the additional feature) have been discussed. D2 (US 4,843,879; referred to in EP’250, ¶[0007]) was apparently agreed to be the closest prior art, and was combined in the assessment of obviousness with either D4 or D11 — both of which have unfortunately not been identified.
For me as a chemist, the highlight of the day was the plaintiff’s emotional release:
That’s not chemistry here; it’s physics!
The formulation of the ‘objective technical problem’ was quite a big deal in the hearing. This is what EP’250 says in ¶[0009] (emphasis added):
It is therefore the aim of the present invention to provide a method for the symmetry adjustment of a device for the capacitive examination of a moving elongated textile test sample which does not have the above disadvantages. The device should be simple, fast, cost-effective and, in particular, automatically adjustable.
Flower power, with roses in particular
Now, can automation be considered as the ‘objective technical problem’? In the plaintiff’s view, the ‘in particular’ is an emphasis of the aim of automation. The defendant disagreed: Automation was an add-on, and the other advantages could well be realised without automation. On the funny side, the following example has been used:
She likes flowers, in particular roses.
Now, imagine that the rose-loving woman visits a florist. Which flowers will she recognise first, amidst all the other flowers? The roses, of course!
Costs
Compensation of the ‘necessary expenses’ for the assisting patent attorney pursuant to Art. 3 lit. a and Art. 9(2) CostR-PatC was yet another point of discussion. The plaintiff requested reimbursement of about kCHF 45 for each case and argued, that the defendant triggered the additional costs because the amended claims had only been filed with the rejoinder which then had effectively restarted the whole discussion. I did not get the value in dispute, but the presiding judge indicated that kCHF 45 is about twice as much as the amount that would be awarded for legal respresentation, i.e. ‘according to the tariff’ that is based on the value in dispute.
Now, why is that important?
Since O2012_043, the FPC’s practice is that, as a rule, the ‘necessary expenses’ for the patent attorney may well be within the same order of magnitude of the costs for legal representation. But what about nullity cases? A patent attorney could do that on his/her own, without any legal representative; Art. 29(1) PatCA. Compensation would then be awarded according to the tariff for legal representatives; Art. 9(2) CostR-PatC.
The defendant questioned whether costs incurred for the assisting patent attorney are ‘necessary expenses’ at all, on top of the costs for legal representation according to the tariff, if he/she could have done the whole case on his own.
Use of the technical infrastructure in the court room
It is quite hard for the public to follow the arguments when the representatives just argue with acronyms and references. It’s sometimes frustrating, but I got used to it. But still, one of the basic ideas of a public hearing is to give the public the opportunity to follow the proceedings, isn’t it? But how would you even get a glimpse of what is really at stake when the parties only refer to ‘EP’111’ or ‘D1’ or ‘feature 1da’. That’s not information — it’s just noise.
I was very happy that the recent hearing in case S2018_006 was different (see this Blog here): Whenever someone referred to a specific document, the President put the same on the screen for it to be easily recognisable by the whole audience and the judges; projector and screen are fixedly installed in the ceiling anyway (see yellow arrow in the image below). Much appreciated!
Let there be information …
But that’s not only great for the audience; I strongly feel that it is also beneficial for representatives when arguing their case. When referring to a certain paragraph in a specific document in your pleadings, or a technical drawing, you always want to make sure that all the judges are on the same page, right? But how would you know that, with the judges sitting on a podium that even has an elevated front side that makes sure that nobody reveals a hand up there, behind the monitors. Yes, there are fixedly installed monitors (green arrows in the above image).
Now, did they all pick up the document that you are upon to discuss? You never know. So, why not actually use the monitors that each judge has in front of him/her, and the projector/screen for the audience, to make sure that everybody sees what you want to be seen? I could not think of any more powerful way to focus the discussion and thoughts on a specific argument.
Unfortunately, it didn’t work out that way in this hearing even though the defendant suggested it. I hope this was for technical reasons only, and does not indicate a general change of practice again.
If in a patent infringement proceeding the plaintiff files before the instructional hearing a reply limited to the defense of the validity and no pleadings take place at the instructional hearing, the plaintiff may submit new allegations of fact, and therefore also amended patent claims, in the completed reply filed after the instructional hearing without having to meet the requirements of art. 229 para. 1 CPC.
Please find some background information about the subject-matter at stake on this Blog here, and a report about the main hearing of 29 October 2018 on this Blog here.
Vyaire logo
In brief, Hamilton Medical AG alleged infringement of its Swiss patent CH 701 755 B1 (see Swissreg for further bibliographic details) by some of imtmedical AG‘s iFlow sensors. Note that Vyaire has recently taken over imtmedical’s ventilator and related consumables business; see imtmedical’s press release here.
The only independent claim 1 of CH’755 as granted reads as follows:
Durchflussmessfühler (10) mit einem ein zylindrisches Gehäuse (10) definierenden Durchgang mit einer ersten Durchgangsöffnung (13) und einer zweiten Durchgangsöffnung (29); einem im Durchgang des Gehäuses angeordneten Strömungswiderstand (23), welcher das Gehäuse in einen ersten und einen zweiten Gehäuseteil (11 und 27) unterteilt; einer ersten Anschlussstelle (17) mit einer Verbindung zum Innern des ersten Gehäuseteils (11); und einer zweiten Anschlussstelle (19) mit einer Verbindung zum Innern des zweiten Gehäuseteils; dadurch gekennzeichnet, dass die ersten und zweiten Anschlussstellen (17, 19) in einem Abstand voneinander auf dem gleichen Gehäuseteil angeordnet sind.
Inofficially translated to English language:
Flow sensor (10) with a passage defining a cylindrical housing (10) with a first passage opening (13) and a second passage opening (29); a flow resistor (23) arranged in the passage of the housing which divides the housing into a first and a second housing part (11 and 27); a first terminal (17) having a connection to the interior of the first housing part (11); and a second terminal (19) having a connection to the interior of the second housing part; characterised in that the first and second terminals (17, 19) are spaced apart on the same housing part.
Fig. 1 of CH’755 surely helps to understand what the invention is about:
Fig. 1 of CH 701 755 B1
The defendant denied an infringement, and argued for nullity as a plea in defense.
The verbal limitation of the patent
This is what the hn is all about. Imagine a plaintiff / patentee in infringement proceedings who is confronted with a plea for nullity in defense: When is his last chance to formally assert his patent only to a more limited and presumably valid extent?
First, it is important to understand how the FPC conducts the proceedings. If the defendant raises a plea for nullity in his answer to plaintiff’s statement of claim in infringement proceedings, the FPC invites the plaintiff to file a reply which is strictly limited to only the nullity aspects of the case. What follows next is an instructional hearing. In preparation of that hearing, the limitation of plaintiff’s reply to only the nullity aspects is to assure that the court has a single exchange of opinions at hand for both infringement and nullity. If the case moves on after the instructional hearing, it is again up to the plaintiff to complete his reply. Thereafter, the defendant provides the rejoinder re both infringement and nullity. This is the end of the regular exchange of briefs in which the parties can present facts and arguments without the need to comply with Art. 229(1) CPC (novae). However, the plaintiff may of course comment on new allegations and facts presented by the defendant in his rejoinder — within a deadline set by the FPC (typically two weeks, extendable by one further week; see this Blog here), or under the unconditional right to be heard (within 10 days).
The below is an illustrative summary of this chain of events:
Plaintiff
Defendant
Statement of Claim
re infringement
Answer
w nullity plea in defense
First reply
re alleged nullity only
Instructional hearing w/o pleadings
Second reply
re infringement and nullity
Rejoinder
re infringement and nullity
Comments
on new factual allegations in the rejoinder, if any
Judge rapporteur’s expert opinion
Note the subtitle to the second reply in the above: The decision holds that the plaintiff may present arguments and facts in his second reply after the instructional hearing not only relating to infringement aspects, but rather also to the nullity aspects of the case.
In the defendant’s view, the plaintiff thus had three chances to deal with validity / nullity of the patent, i.e. in his initial statement of claim and both his replies. The FPC disagreed: There is no reason for a plaintiff to deal with nullity in the beginning. How would he even do so in the absence of any knowledge of the defendant’s potential arguments? Thus, the FPC held that both parties had exchanged their views on both aspects of the case for the first time only after plaintiff’s first reply (limited to nullity). With the second reply and the rejoinder, both without limitations re novae, the double exchange of briefs is concluded.
Undoubtedly, an amended claim is to be considered a new fact (decision 4A_543/2017 of the Supreme Court, ¶2.3); as such, it would be an inadmissible novum after the normal exchange of briefs.
The plaintiff ‘verbally limited’ the claim only in his second reply. The defendant argued that this second reply was limited to only infringement aspects; it should only complement the first reply that had already dealt with nullity. Defendant argued that this was established practice at the FPC. Again, the FPC disagreed: There was not an established practice of the FPC in that sense.
now, what?!
Interestingly, the former President Dieter Brändle had apparently indicated in the instructional hearing that the patent could not be asserted in a more limited form any more after the instructional hearing. Defendant argued that it is against good faith if the limitation was now accepted nevertheless. However, the decision holds that it is up to the whole panel of judges to finally rule on admissibility of new facts; Mr. Brändle only gave his personal, preliminary opinion on this issue at that time. When the defendant had been invited to provide his rejoinder, this came along with an explicit note to deal with plaintiff’s reply as a whole, and that the whole panel of judges would finally decide on admissibility of the limitation of the patent. Thus, the defendant had no procedural disadvantage.
On a sidenote, I am wondering what the last point of time would be for a patentee / plaintiff to limit the claim when faced with a full-fledged counterclaim for nullity, i.e. when there are two parallel tracks of claim and counterclaim:
Plaintiff
Defendant
Statement of Claim
(re infringement)
Answer
re claim
Counterclaim
(re nullity)
Answer re c’claim
Instructional hearing w/o pleadings
Reply
re claim
Rejoinder
re claim
Reply
re c’claim
Rejoinder
re c’claim
Comments
on new factual allegations in the rejoinder re c’claim, if any
Judge rapporteur’s expert opinion
Would the plaintiff’s reply after the instructional hearing then be limited to the infringement part, and the final chance to limit the claim be the rejoinder re c’claim? This remains to be seen in a case to come.
General remarks on claim construction
The decision summarises certain key aspects of claim construction in ¶25 (and, later on, in ¶47). I do readily agree with most of it, but stumbled upon the following:
When case-law refers to ‘broadest interpretation’ of claim features,15 the feature must still be capable of fulfilling its purpose in the context of the invention. This means that the claim must not be interpreted under its wording, but also not in such a way that embodiments are covered which do not achieve the inventive effect.
15 FPC, decision O2013_008 of 25 August 2015, ¶4.2 — ‘elektrostatische Pulversprühpistole’ [see this Blog here]
The decision cites ample case-law, but there is no fn in the last sentence. Now, where does that come from? The sentence somehow reminds me of hn 3 of the ‘Spannschraube’ decision of the German Federal Supreme Court, X ZR 85/96 of 2 March 1999. The German Supreme Court had held:
The scope of protection of a European patent cannot be extended to embodiments which wholly (or to an extent which is practically insignificant) waive the success sought by the patent.
However, the Swiss Supreme Court had to assess the same subject-matter shortly thereafter, and explicitly disagreed; 4C.348/1999 of 12 April 2001: What had been considered to be no infringement in Germany, was well an infringement in Switzerland!
The Swiss Supreme Court did not see any reason to deviate from the literal and technically plausible meaning of the feature — even though an explicit object of the patent that had been recited in the specification was not achieved by such embodiments, i.e. the use of very short clamping screws (see EP 0 319 521 B1, col. 1, l. 54-57):
Der Erfindung liegt die Aufgabe zugrunde, eine Rohrschelle der eingangs genannten Art zu schaffen, die sich auch mit einer sehr kurzen Spannschraube gut handhaben und leicht schliessen lässt.
It remains to be seen whether the present decision might indicate a gradual departure from the old Spannschrauben approach of the Swiss Supreme Court.
Alleged nullity
The claims at stake can be summarized as follows, structured into features:
a)
Flow sensor (10) with
b)
a passage defining a cylindrical housing (10) having a first through opening (13) and a second through opening (29);
c)
a flow resistor (23) arranged in the passage of the housing, which divides the housing into a first and a second housing part (11 and 27);
d)
a first connection point (17) having a connection to the interior of the first housing part (11);
e)
a second connection point (19) having a connection to the interior of the second housing part;
f)
the first and second connection points (17, 19) being arranged at a distance from one another on the same housing part;
i)
claim 4 as granted:
wherein flanges are provided on the first housing part (11) and on the second housing part (27) for connecting the housing parts with flange pressure surfaces (15, 16, 31, 32) are formed;
j)
first variant of claim 10 as granted:
wherein the connections run partly in the flange pressure surfaces,
and/or
k)
second variant of claim 10 as granted:
[wherein the connections] exit through the flange pressure surface as openings on the sealing surface side (17, 19, 21, 33, 35, 37) .
Features a) – f) correspond to claim 1 as granted (marked in bold in the above); the whole set of features, i.e. a) – f) and j) – k), corresponds to the claim as limited with plaintiff’s second reply. Don’t get confused by the missing features g) and h): The parties referred to these features in their feature analysis; but they are irrelevant for the present decision since they only relate to dependent claims 2 and 3 which are not at stake.
The decision holds that claim 1 as granted lacks novelty over document E10, i.e. (JP S61-205023); see Fig. 1:
JP S61-205023, Fig. 1
Next, the decision assesses and acknowledges novelty of the more limited claim over E1 (US 6,585,662 B1) which lacks features j) and k). Defendant had also argued that a prior use of the device of E1 had occured (prior use ‘Jones’). However, the decision holds that this prior use does not need to be assessed any further: Defendant had argued that the prior use disclosed a device according to the teaching of E1. Thus, the decision holds that any such prior use would necessarily also have lacked features j) and k).
Moving on to the assessment of obviousness, the decision emphasizes that it is up to the party that alleges nullity of a patent to make the relevant allegations. The court only examines whether the grounds put forward lead to the invalidity of the patent. Even though obviousness is a question of law, the relevant factual assertions must be made by the party that asserts nullity. In the following, therefore, the decision only deals with the assessment of obviousness starting from document E2 that has been referred to as ‘closest prior art’ by the defendant, i.e. US 4,083,245.
Features f), j) and k) are missing in E2.
With E2 as closest prior art, the decision holds that documents E7 (DE 32 25 114 C1, erroneously referred to as DE 32 25 115 C1 in the decision), E8 (US 1,768,563 A) and E9 (JP H03-21735 U) fail to render the limited claim obvious — mainly because these devices are made from metal / intended for use in high pressure applications, contrary to flow sensors in the medical field which are typically made of plastic, using die casting methods.
In sum, the more limited claim that the plaintiff had submitted with his second reply was thus held to be valid.
Infringement
Defendant most fiercely contested that the adult version of the flow sensors has flange pressure surfaces and, even if there were flange pressure surfaces, that the connections from the connection points to the inside of the first/second half of the housing run partially into or through the flange pressure surfaces. Defendant referred to the computer tomographic images that had been submitted by the plaintiff:
CT image of the flange of an attacked embodiment
The above figure shows a cross-section through theflanges of the two halves of the housing. The flow resistor which is clamped between the flanges is marked with 23. Identifiers 45 and 47 mark a groove and comb structure. Defendant argued that the gas-tight connection is made exclusively via the groove/comb structure. However, the flange surfaces would not touch each other (red arrows in the above figure); only the planes of the comb and groove that protrude perpendicularly from the flange surface would be in contact (white arrows in the above figure). Defendant argued that this is intentional because it allows flow resistors of different thicknesses to be used without the housing halves having to be designed differently, contrary to the teaching of the patent in suit. Since, by definition, flange pressure surfaces would have to lie against each other under pressure, flange pressure surfaces are missing in the adult version, in the defendant’s view. And even if the area in which the flow resistor is trapped by the flanges (marked with a yellow arrow in the figure above) were still called the ‘flange pressure surface’, no connections would occur there in any case. Defendant referred to the below figure in this respect (with the white squares / annotations added by the court):
Flange, annotated by the court
The above figure again shows a cross-section of an adult version of the flow sensor. The thin vertical line is the flow resistor; identifier 33 refers to one of the connections to a connection point which seems to end on the right because it runs diagonally in the Z plane. The decision holds that ‘flange pressure surface’ and ‘flange surface’ are used as synonyms in the patent. A flange pressure surface in the sense of the claim is the surface of a flange facing away from the body part to which the flange is attached and serving to connect the body part to another body part, whereby the connection need not necessarily be made over the entire surface.
Thus, the flange pressure surface of the attacked embodiment runs over the entire width of the flange, i.e. in the above figure from point a) to point b). Consequently, the decision holds that the connections from the connection points to the inside of the first/second housing parts also run through the flange pressure surfaces, as can be seen in the figure above.
The decision holds that the defendant may have improved the teaching of the patent in suit, and the improvement might even be patentable. This does not, however, lead out of the scope of protection of the earlier patent (cf. Art. 36 PatA). In sum, the decision holds that the version for adults is literally covered by the limited claim of the patent. Likewise, the version for children is also held to be literally covered by said claim.
iFlow version for adults
iFlow version for children
Wording of the injunctive relief
The defendant objected to the wording of the request for injunctive relief, for that it is too indefinite and merely recites the wording of claim features that are under dispute between the parties (such as e.g. the term ‘flange pressure surface’). The decision holds that the features are defined in the reasons of the decision beyond any doubt, so that a mere factual check by the competent authorities is well sufficient. Thus, it is neither necessary nor helpful for each and every feature to be defined in the prayer for relief itself.
Again, this reminds me a bit of the German approach where the mere claim wording is typically used in prayers for injunctive relief, and the exact scope is then to be deduced from the reasons of the decision. I do have some symphathy for the FPC’s approach that keeps the verdict clean and simple, with all the potential ambiguities being resolved by way of definitions given in the reasons.
In sum, the defendant was ordered to abstain from further use of the infringing embodiments, and to provide information and accounting concerning the same.
The parties commented on the decision with the following press releases:
No, not about the civil rights movement. I am far less ambitious. I am just wondering: Wouldn’t it be great if one day we would all do the same when assessing obviousness?
Aiming high now: Maybe not only in prosecution, but even in litigation therafter!
We are surely not yet there.
For instance, the German Federal Court of Justice (FCJ) has some reservations, as discussed by judge Klaus GRABINSKI here:
The [EPO] Guidelines stipulate that deviation from this strictly schematic approach should be exceptional. The approach serves the interests of objective and predictable assessment in the examination procedure, in which, under Article 18(2) EPC, only the applicant and one member of the examining division are normally involved. Its appropriateness in this context is not to be questioned here; however, for a court procedure conducted on an adversarial basis between two or more plaintiffs and defendants, its suitability is limited.
But what are these reservations?
Firstly, the choice of a (single) closest prior art as the starting point in the assessment of obviousness, in GRABINSKI’s view:
Experience shows that, in nullity proceedings, the plaintiff generally presents several starting points (documents, public prior uses, etc.) in respect of inventive step. The court then has to assess whether the skilled person would actually have selected these starting points. According to the case law of the German FCJ, the choice of a specific starting point for the consideration of inventive step requires particular justification. This can be derived from the skilled person’s endeavour to find, for a specific purpose, a solution better than or different from the solution provided in the prior art. The test can be applied with one or more starting points (documents, public prior uses, etc.). There is no reason to limit the assessment of inventive step from the outset to the “closest prior art”. Otherwise, there is the risk of an inadmissible ex post evaluation of the prior art with regard to what is “closest”.
However, GRABINSKI holds that the EPO’s approach essentially does not differ much (what I believe is true, and I will come back to this in the below):
Ultimately, the same view would appear to prevail in the [then] current Guidelines for Examination. The authors concede, with reference to several decisions of the boards of appeal, that in some cases there are several equally valid starting points for the assessment of inventive step and that, in the event of refusal, it is sufficient to show, on the basis of relevant prior art in respect of at least one solution, that the claimed subject-matter lacks an inventive step. In such a situation, there is no need to discuss which document is “closest” to the invention; the only relevant question is whether the document used is a feasible starting point for assessing inventive step.
The formulation of the objective technical problem is key in the EPO’s problem-solution approach. Admittedly, this involves a somewhat artificial, retrospective approach. But it does so by design and in the interest of legal certainty, for that it be a reliable tool with predictable results. In my perception, the German FCJ takes a somewhat different approach; the problem(s) it typically refers to is/are not the objective technical problem of the problem-solution approach— at least not necessarily; see e.g. the discussion of the FCJ’s decision X ZR 29/15 - Pemetrexed by Rainer ENGELS here.
But be that as it may, I have no reason to blame the German FCJ for its approach. It may or may not be better suitable to avoid hindsight, or to provide legal certainty for users. There is more than one way to skin a cat, and the German FCJ never said to have adopted the EPO’s problem-solution approach.
However, the Swiss FPC did — repeatedly and in no uncertain terms (see e.g. O2015_018, ¶30):
Le Tribunal fédéral des brevets applique l’approche problème-solution développée par l’Office européen des brevets dans le cadre de l’évaluation de l’activité inventive.
Loosely translated:
The Federal Patent Court applies the problem-solution approach developed by the European Patent Office in the context of the evaluation of inventive step.
Hooray! They play the game as I know it!!
Thus, European patent attorneys in civil proceedings at the FPC can just do what they do all day long in proceedings at the EPO, at least in the assessment of obviousness? Actually, this would not come as a complete surprise since the second permanent judge (Tobias Bremi) and 27 of the non-permanent judges have a technological background and are European patent attorneys by training.
But hold on, it’s maybe not that easy.
Clearly, the FPC has the same reservations with respect to the choice of a (single) closest prior art; see O2013_011 in the hn and ¶5.6, with further reference to T 967/97, as well as S2017_001, ¶4.6.
But I feel that GRABINSKI is right in that this is nothing out of the ordinary in EPO practice (as it should be, taking into account the case-law of the Boards of Appeal); it is just that the term closest prior art used in the problem-solution approach might be misleading in that it suggests that this is always just a single document.
But what concerns me in recent times is the concept of a reasonable expectation of success; see this Blog here. The argument that there had been no reasonable expectation of success is easily made and thus frequently seen. And it is always easy to cast doubts in the assessment of obviousness:
Just imagine what could have gone wrong!
What is worse, such arguments cannot be proven wrong: Indeed, life is risky.
Not fully according to expectation …
Now, what the heck is actually a reasonable expectation in the skilled person‘s eyes?
The EPO Guidelines
The Guidelines are firm instructions to the first instance bodies of the EPO; see the foreword:
As a general rule, parties may expect the EPO to act in accordance with the Guidelines until such time as they – or the relevant legal provisions – are amended. […] In case of diverging decisions of the Legal or Technical Boards of Appeal, EPO examiners and formalities officers will, as a rule, follow the common practice as described in the Guidelines.
Patent applications filed with the EPO (Source: EPO)
More than 160’000 patent applications are filed with the EPO per year. And obviousness is to be assessed for all these applications; Art. 56 EPC.
If the concept of a reasonable expectation of success was of general importance for the daily practice of the first instance bodies at the EPO, one would readily expect it to be addressed in the Guidelines.
But, interestingly, it is not discussed at all — at least not in the chapter on assessment of obviousness.
The term reasonable expectation of success is only mentioned once in the Guidelines, but only a contrario, in the context of novelty of selection inventions in G-VI, 8:
The concept of seriously contemplating, or ‘ernsthaft in Betracht ziehen’ in German, is fundamentally different from the concept used for assessing inventive step, namely whether the skilled person would have tried, with reasonable expectation of success, to bridge the gap between a particular piece of prior art and a claim whose inventiveness is in question (see G-VII, 5.3), because in order to establish anticipation, there cannot be such a gap (T 666/89).
If you follow the link to G-VII, 5.3 in the hope to learn more about the concept of a reasonable expectation of success, you will be disappointed: There is nothing about reasonable expectation of success. G-VII, 5.3 is all about the could-would approach as we all know it. It reads as follows:
[T]he 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 (see G‑VII, 4).
In other words, the point is not whether the skilled person could have arrived at the invention by adapting or modifying the closest prior art, but whether he would have done so because the prior art incited him to do so in the hope of solving the objective technical problem or in expectation of some improvement or advantage (see T 2/83).
What?!
Hold on a second.
It is worth reading the second paragraph again. The expectation of some improvement or advantage language is taken literally from T 2/83. But did you notice the other alternative?
I don’t know where the wording in the hope of solving the objective technical problem comes from; this inconsistency has already been discussed by discussed by Wooden, Blaseby and Visser recently. It somehow found its way into the Guidelines already back in 2003. But T 2/83 is silent about hope. The could-would approach clearly is not about hope; it is about an expectation.
Anyway, there is nothing about a reasonable expectation of success. It is only about an expectation of some improvement or advantage.
Now, do these terms maybe both mean essentially the same? I.e., is
success only the short for some improvement or advantage; and
the expectation (implicitly) meant to be reasonable in any event?
Too many people making too many problems?
If so, fine. But wouldn’t it be good to use the same terms when referring to the same things? It’s a land of confusion anyway.
Or are they not the same? If that was the case, then the concept of a reasonable expectation of success just cannot be of any broader relevance for the first instance bodies at the EPO at all. Else, it would surely be referred to in the Guidelines.
Getting confused? Hold on tight, it’s not getting easier …
Learnings from the FPC
Decision S2017_001 in r 4.7 embraces the EPO’s could-would approach recited above. With reference to Kroher (Singer/Stauder, EPÜ, 7th ed., Art. 56, ¶73-74) the decision further holds that the ‘would’ is satisfied if there is a motivation to arrive at the claimed solution and an expectation of success that this solution actually works:
Dass der Fachmann die erfindungsgemässe Lösung effektiv finden würde gilt als gezeigt, wenn aus den Unterlagen ersichtlich ist, dass der Fachmann einen Anlass hatte (‘motivation’), zur erfindungsgemässen Lösung zu kommen, und er eine Erfolgserwartung hatte, dass die erfindungsgemässe Lösung auch funktioniert (‘expectation of success’).
Noteworthy, this does not even require the ‘expectation of success’ to be reasonable, and that the ‘success’ is realistically achievable — at least not explicitly. Kroher did not put it like this. This is what Kroher exactly says (emphasis added):
Zum Could-would Ansatz gehört auch die Wertung, ob für den Fachmann eine angemessene Erfolgserwartung bestand, ob er auf der Grundlage seines Wissens und Könnens realistisch mit einem Erfolg rechnen konnte oder nicht (vgl Rdn 136).161
First, none of the references cited in the fn actually says that the assessment of a reasonable expectation of success is part of the could-would approach. So, where does this come from?
Second, assuming that it really was part of the could-would approach, then how can it be that examiners and opposition divisions of the EPO deal with more than 160’000 cases per year in the absence of any instructions in the Guidelines? An integral part of the could-would approach did not make it into the Guidelines for decades? I can hardly believe that.
Third, the cross-reference to ¶136 in the Kroher chapter exclusively relates to biotech cases. And this is where it belongs — pretty exclusively, in my perception. Actually, the Boards of Appeal of the EPO have come up with the concept of a reasonable expectation of success in biotech cases. Frankly, I am not aware of any non-pharma or non-biotech case where the reasonable expectation of success argument had ever been successfully invoked to establish non-obviousness.
In sum, Kroher’s conclusion is not readily convincing to me, and it is not supported by the references given. I could only agree, again, if the reasonable expectation of success does not mean anything different than the expectation of some improvement or advantage according to the problem-solution approach.
What troubles me is that the FPC’s concise summary in S2017_001 is not just a summary of Kroher, or any other reference cited by Kroher. Rather, it adds further terms and interpretation, and appears to be more harsh in that the terms ‘reasonable’ and ‘realistic’ are just omitted.
[…] the skilled person would have arrived at the invention by adapting or modifying the closest prior art because the prior art incited him to do so […] in expectation of some improvement or advantage (see T 2/83).
In my understanding, the test is fairly easy. The skilled person could have done a lot. What the could-would approach is all about is to sort out what he actually would have done. Nothing more, nothing less. It does so by requiring prompters (sometimes referred to as pointers) or incentives in the prior art for the skilled person to arrive at the invention.
Ask Google for a definition of ‘motivation’, and you will get this.
Now, where does the ‘motivation’ referred to in S2017_001 come into play? There is no need for the additional term ‘motivation’ in the could-would approach. It might even cause confusion with the former teaching-suggestion-motivation (TSM) test in the U.S., or the Veranlassung approach of the German FCJ (which GRABINSKI says is very similar but not the same as the EPO’s could-would approach).
But be that as it may, a motivation in its broadest sense (according to Google) is
a reason or reasons for acting or behaving in a particular way.
Thus, I feel it is fair to say that the motivation referred to in S2017_001 is nothing more than the prompter or incentive. No need to fiddle around with yet another term in discussing the could-would approach. Talking about incentives, prompters (and pointers) is already complicated enough.
But that’s not the end of the story. The could-would approach cannot and does not just demand for an incentive in the prior art. An incentive to do … what? Adapting or modifying the closest prior art is no value in itself. It’s all about an incentive to achieve something; it must have a goal. The could-would approach consequently asks for an incentive to adapt or modify the closest prior art in expectation of some improvement or advantage — well, actually to solve the objective technical problem.
In a nutshell
The problem-solution approach which the FPC has comitted to apply includes the could-would approachwhich is a pretty decent tool that has been applied by the first instance bodies of the EPO for decades.
However, there is no mentioning of a reasonable expectation of success in the could-would approach. I am currently not sure whether the FPC tends to apply a somewhat modified could-would approach, or whether it understands and applies the expectation of some improvement or advantage in the sense of a reasonable expectation of success — a concept that the Boards of Appeal have developed and applied by now only in biotech cases, to the best of my knowledge.
On a sidenote, I do not readily agree with the threshold the FPC seemingly sets as reasonable; see S2017_001 (¶4.7; emphasis added):
Ob eine angemessene Erfolgserwartung gegeben ist, hängt immer stark von den konkreten Umständen und dem betrachteten technischen Gebiet ab und dabei unter anderem erheblich davon, ob es rational möglich ist, eine Vorhersage über den Erfolg zu machen. (Fn: Vgl. z.B. Medimmune Ltd v Novartis Pharmaceuticals UK Ltd & Ors [2012] EWCA Civ 1234 (10 October 2012), Reasons 91-95)
Note, that Medimmune v Novartis in no way puts such emphasis on the predictability of success, which is rather referred to as just one of many circumstances to consider. It reads as follows (¶91):
Whether a route has a reasonable or fair prospect of success will depend upon all the circumstances including an ability rationally to predict a successful outcome, how long the project may take, the extent to which the field is unexplored, the complexity or otherwise of any necessary experiments, whether such experiments can be performed by routine means and whether the skilled person will have to make a series of correct decisions along the way.
We have seen some interesting decisions lately that deal with basic principles in the assessment of inventive step / obviousness. For instance, the Supreme Court provided guidance how to deal with a non-enabling disclosure as a closest prior art document; see this Blog here. But there is yet another decision of potentially wider relevance, i.e. in that it apparently re-defines how to formulate the ‘objective technical problem’.
It’s silly season now, and I could not help but reflect a bit about the typical learning curve of a patent attorney trainee when getting acquainted with such basics. If you are in a rush, feel free to jump over here.
Patent law is somewhat mysterious. The basics of patentability are very simple: The claimed subject-matter shall
be new (‘just don’t claim exactly what has been out there already’); and
involve an inventive step (‘a bit creative, please – not just obvious’);
On the merits, that’s pretty much it. Admittedly, there are some side aspects to observe, e.g.
it should have industrial applicability (‘it should be useful’);
it should not be excluded from patentability by law (‘don’t do what is explicitly forbidden’);
it should be sufficiently disclosed (‘tell the world how to make use of it’).
But that doesn’t seem to be a big deal. A quite common first thought of a patent attorney trainee goes like:
Well, that’s it? Why do I have to wait three years to sit (and pass!) the exam?
Learning by doing
Later, one realizes that things are much more complicated than it seemed at first glance — and that it’s probably not a bad idea to test these basic concepts in real cases for a while, and one is grateful for some supervision before actually sitting the exam (while still at least hoping to pass).
Thereafter, it’s like driving a car. Passing the exam does not yet mean that you are a good driver. Still, at some point sooner or later and with some experience in the field, almost everybody will fairly get along on the streets.
This is no invention. No way!
It’s the same with patent attorneys: We are said to have quite firm opinions (when we finally have made up our mind), and it’s our bloody job to transfer this opinion to whoever needs to be convinced, every single day.
But patent attorneys constantly fail. Just look at all the negative office actions in the mailbox every day. Still, we know how to play the guitar. No doubt that a case only failed because the specific piece of music was not well perceived by the audience.
But when the common general understanding of how to assess inventive step / obviousness is whobbling, I am getting concerned. That’s my day-to-day business! Do I still play the game correctly?
Assessment of ‘inventive step’
In knowledge of what the invention is, it’s hard (if not impossible) to objectively evaluate whether or not it had been obvious before the invention has seen the light of day. As soon as you are aware of the invention, the unavoidable hindsight bias undermines any objective assessment.
Case law should be predictable, and individual judgments must be ‘right’. That’s a tricky balance — and whenever things are tricky, it’s comfy to have standardized tools at hand. This is where the EPO’s problem-and-solution approach comes into play (Guidelines, G-VII, 5), and which the FPC has repeatedly indicated to apply. It aims to avoid hindsight bias, and it does so with a rigid framework to be worked through. In brief, the problem-and-solution approach involves three main steps:
Step i), i.e. the question of whether or not something should be considered as the ‘closest prior art’, is mostly a major issue in any discussion of inventive step. I won’t dive into this now, but I strongly recommend Oliver Randl’s Post on an his Blog ‘K’s Law‘. (The Blog is dormant now because he became a member of the Boards of Appeal.) His comparison of assessment of inventive step with mountaineering is just great.
Further, one may well discuss for quite a while in step iii) what a skilled person would actually have done or not. The EPO’s could-would approach requires that
[…] the prior art as a whole […] 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 into account of that teaching, thereby arriving at something falling within the terms of the claims, and thus achieving what the invention achieves.
The gist is that hindsight should not be an issue if there is a pointer or an objective incentive to combine two pieces of prior art. Fine. But …
The definition of the ‘objective technical problem’
Everything hinges on the definition of the objective technical problem in step ii), and this is what this Post is all about. According to the EPO Guidelines (G-VII, 5.1),
[…] one establishes in an objective way the technical problem to be solved. To do this one studies the application (or the patent), the ‘closest prior art’ and the difference (also called ‘the distinguishing feature(s)‘ of the claimed invention) in terms of features (either structural or functional) between the claimed invention and the ‘closest prior art’, identifies the technical effect resulting from the distinguishing features, and then formulates the technical problem. […]
It is noted that the objective technical problem must be so formulated as not to contain pointers to the technical solution, since including part of a technical solution offered by an invention in the statement of the problem must, when the state of the art is assessed in terms of that problem, necessarily result in an ex post facto view being taken of inventive activity (see T 229/85).
That’s how I’ve learned to play the game. A plain and simple mechanism:
identify the distinguishing feature (e.g. bolt and nut instead of a nail);
identify the technical effect of the distinguishing feature in the context of the invention (e.g. ease of detachability)
define the objective technical problem based on the technical effect of the distinguishing feature (e.g. facilitate detachability)
Does O2015_008 lower the bar?
When re-reading the judgment O2015_008 of 14 March 2018 (commented on this Blog here), I stumbled upon a general remark in ¶66 that I had overlooked before. It reads as follows (translated from French):
Nevertheless, the question must be asked whether the objective problem that is used for the problem-and-solution approach […] finds a basis or motivationin the closest prior art document or is part of the standard problems for the skilled person, and does not incorporate elements of the proposed solution into the patent (cf. T 59/90, r. 8). This is important to avoid hindsight bias.
(A reasoning along these lines, but in less explicit terms, can also be found in ¶33 of the decision O2015_018 of 15 June 2018, with the very same reference to T 59/90; see this Blog here.)
First, I just don’t know for sure what is meant with ‘standard problems’; but maybe this refers to e.g. ‘less expensive’, ‘faster’, ‘more efficient’ or similar things.
But be that as it may, I feel that the whole approach is flawed.
Why should it be required to have a basis or motivation for the ‘objective technical problem’ in the ‘closest prior art’?
Let’s take a simple example:
The invention is a car with an allegedly clever engine — but there is a lot of other stuff recited in the claim, e.g. wheels, mirrors, bumper, a radio, etc.
Obviously great
The ‘closest prior art’ shows almost everything, in particular the allegedly clever engine. So this really is a reasonably chosen ‘closest prior art’. In fact, it is almost novelty destroying. It is only silent about the radio.
Car radios are perfectly known, but in no way mandatory. Thus, there clearly is no implicit disclosure of a radio in the ‘closest prior art’, and one has to deal with it as a matter of obviousness.
In my perception, a proper definition of the objective technical problem will somehow need to address entertainment and/or information in a car, while carefully avoiding to mention a radio.
The alleged invention correctly just cannot survive the problem-and-solution approach because there are a lot of car radios in the prior art as a whole, and the skilled person would surely have integrated them as a straight-forward solution to the objective technical problem to be solved.
But I am not so sure about this if the reasoning in ¶66 of O2015_008 was correct. To be frank, I don’t even have a clue how the objective technical problem should then be defined. There just is no ‘basis or motivation’ towards entertainment or information in that document.
Alternatively, let’s start from a car with wheels, mirrors, bumpers and a radio as the ‘closest prior art’, and then try to combine it with the (not anymore) ‘closest prior art’ showing the engine. Assume the clever engine is just shown somewhere in the smallprint, without any indication of advantages or further explanations. It’s just there, and it’s not immediately apparent why it actually is clever. You will then have a hard time to hunt this April Fool’s joke of an ‘invention’ down with the problem-and-solution approach, in the absence of any pointer towards the invention, i.e. to use the engine from the prior art in a car with wheels, mirrors, bumper and — believe it or not — a radio.
Frankly, this cannot be it. I feel there must be a bug in a test that does not reliably sort out such non-inventions.
Struggling with this, I sought for guidance in T 59/90 (¶8) referred to in ¶66 of O2015_008. But there is none. It might be the last paragraph of ¶8 that appears to support the view taken in ¶66 of O2015_008, at least at first glance. It reads as follows:
Daraus muss geschlossen werden, dass aus [dem nächstliegenden SdT] das der patentgemässen Aufgabe zugrundeliegende Problem nicht bekannt war, und demzufolge auch die Lösung der Aufgabe aus [dem nächstliegenden SdT] in Verbindung mit dem allgemeinen Fachwissen nicht nahegelegt gewesen sein kann.
Loosely translated:
It must be concluded that the actual technical issue underlying the objective technical problem was not known from [the closest prior art], and therefore the solution of the problem could not have been obvious from [the closest prior art] in connection with the general technical knowledge.
However, the Board did not deal with the formulation of the objective technical problem here. It took the objective technical problem as it had been properly defined beforehand, and then summarized its assessement according to step iii), i.e. the could-would approach.
At closer scrutiny, it turns out that all this was only intended to sum up the reasons in respect of a single attack based on the ‘closest prior art’ per se, only in further view of the common general knowledge of the skilled person. Thus, it had essentially been argued by the opponent that the ‘closest prior art’ in itself would render the claimed subject-matter obvious for the skilled person. In that case, I might agree that the ‘objective technical problem’ needs to have a basis or motivation in the ‘closest prior art’ because it is not combined with yet another document but rather is considered self-contained, only seen with the eyes of the skilled person (common general knowledge). Where else should the pointer come from, if not from the ‘closest prior art’ in such a case?
But as soon as the ‘closest prior art’ is considered in further view of yet another document, the basis or motivation may well be derived from that further document.
And this is exactly what has been done in T 59/90. The Board moved on to assess in ¶9 whether there is any incentive towards the solution of the objective technical problem in any other prior art document:
It remains to be checked whether a suggestion for the solution of the objective technical problem can be derived from any of the other documents on file.
Note that the Board did not touch the wording of the ‘objective technical problem’ when moving on to check the combinations with the other documents on file. This is the problem-and-solution approach; nothing more, nothing less.
Further, I strongly doubt that this decision is of much relevance at all. It had been only distributed to Chairmen of other Boards (classified as ‘C’), and it has been cited by other Boards only once in 25 years (T 1009/96), for an unrelated aspect. And it is not that this Board had cited it by its own volition. Rather, it had to bother with T 59/90 because a party brought it up. It had been argued that a piece of prior art cannot be considered as ‘closest prior art’ at all because it did not deal with the specific problem of the invention. But this is not my point here, and the argument failed anyway. What is more, T 59/90 is not even mentioned in the reference book ‘Case Law of the Boards of Appeal‘. Thus, the decision has effectively been ignored by other Boards for a quarter of a century. Rightly so, because there is nothing special in it.
Concluding, I don’t see that T 59/90 supports the view taken in ¶66 of O2015_008 (except for the special situation where lack of inventive step is argued based on a single reference, i.e. the ‘closest prior art’ per se), and the above example shows how it would almost inevitably lead to obviously wrong results. In my perception, there is no need to spice up the well established framework of the problem-and-solution approach with yet further requirements. Rather, it can and should be applied as set forth in the Guidelines, for that case law remains predictable. And I have no reason to doubt that it leads to ‘right’ decisions — if applied correctly.
UPDATE 26 Sep 2018:
Decision T 910/90 states the following in ¶5.1 (and I fully concur with this):
Dabei kommt es nicht darauf an ob diese Aufgabe bereits im nächstkommenden Stand der Technik angesprochen ist, sondern darauf was der Fachmann beim Vergleich des nächstkommenden Standes der Technik mit der Erfindung als Aufgabe objektiv erkennt.
Loosely translated:
It does not matter whether this problem is already addressed in the closest prior art; rather, it is decisive what the skilled person objectively recognizes as the problem when comparing the closest prior art with the invention.
However, [the definition of the objective technical problem according to the problem-and-solution approach] is only valid insofar as the technical problem thus determined can reasonably be presumed to be a problem that arises without inventive effort within the general framework of the closest prior art document. Otherwise, this approach would focus the disclosure of the closest prior art and its interpretation in the direction of the invention, and introduce hindsight. (cf. T 59/90, ¶8)
is obvious in view of the state of the art (Art. 56 EPC).
The fate of a patent application thus critically depends on the ‘state of the art’. Now, what is comprised in the ‘state of the art’? The EPO educates its customers in the Inventors’ handbook in plain and simple words:
A prehistoric cave painting can be prior art. A piece of technology that is centuries old can be prior art. A previously described idea that cannot possibly work can be prior art. Anything can be prior art.
Easy, isn’t it? Not so, the closer you look.
In legal terms, the ‘state of the art’ is defined in Art. 54(2) EPC which reads as follows in the three official languages of the EPC (emphasis added):
German
English
French
Den Stand der Technik bildet alles, was vor dem Anmeldetag […] der Öffentlichkeit […] zugänglich gemacht worden ist.
The state of the art shall be held to comprise everything made available to the public […] before the date of filing […].
L’état de la technique est constitué par tout ce qui est été rendu accessible au public avant la date de depot […].
There are at least two issues that have recently been looked at more closely in relation to the term ‘state of the art’ in Switzerland:
How shall a pre-published, non-enabling disclosure be dealt with?
The Swiss Supreme Court recently held that even a non-enabling disclosure well belongs to the ‘state of the art’ (contrary to what the EPO typically does, i.e. to just ignore it; see Guidelines, G-IV, 2). But, in the Supreme Court’s view, such a piece of prior art cannot be assessed with the EPO’s problem-and-solution approach because the objective technical problem in such a case is just to find a working solution for what had been insufficiently disclosed previously, and there is an inherent motivation to search for that solution; see this Blog here.
What actually is the ‘art’ referred to in ‘state of the art’?
At the INGRES annual meeting of July 5, 2018, Hannes Spillmann briefly discussed a clash between two Board of Appeal decisions at the EPO, i.e. T 0172/03 and T 2101/12. The latter explicitly disagrees in its headnote with the headnote of the earlier decision T 0172/03, in the fundamental question of what actually is meant with
state of the art.
Which ‘art’ does Art. 54(2) EPC refer to? Can something described previously be excluded right from the outset just because it is not related to classic ‘technology’? The headnotes of T 0172/03 suggest exactly that (emphasis added):
1. The term ‘state of the art’ in Article 54 EPC should, in compliance with the French and German text, be understood as ‘state of technology’, which in the context of the EPC does not include the state of the art in commerce and business methods. The term ‘everything’ in Article 54(2) EPC is to be understood as concerning such kind of information which is relevant to some field of technology.
2. From these considerations it follows that anything which is not related to any technological field or field from which, because of its informational character, a skilled person would expect to derive any technically relevant information, does not belong to the state of the art to be considered in the context of Articles 54 and 56, even if it had been made available to the general public before the relevant priority date (see points 8 to 10 of the reasons).
Points 8 to 10 of T 0172/03 referred to in hn 2 leave no doubt that the gist really is to just exclude certain publications from any consideration as ‘state of the art’ whatsoever:
[T]he decision under appeal […] identifies the closest prior art as “the existing order placing mechanism” as if such a business scheme qualified as prior art as any other piece of technical information. […]
It can hardly be assumed that the EPC envisaged the notional person skilled in the (technological) art to take notice of everything, in all fields of human culture and regardless of its informational character. A consistent construction of the patentability provisions requires the term “everything” in Article 54(2) to be understood as concerning such kind of information which is relevant to some field of technology.
Catch-22
I am having difficulties to read an element (“art” / “Technik” / “technique”) of the phrase that is to be defined (“prior art” / “Stand der Technik” / “l’état de la technique”) in Art. 54(2) EPC into the definition itself. This is a Catch-22, in my perception; see also T 2101/12, ¶6.6 in this respect.
Luckily, T 2101/12 sets it right again; the hn reads as follows:
I fully concur with this. Whatever has been made available to the public is to be considered ‘state of the art’ in the sense of Art. 54(2) EPC, irrespective of whether it relates to a field of ‘technology’ or not.
It remains to be seen how the case law of the Boards will develop. Note that T 2101/12 only explicitly disagrees with hn 2 of T 0172/03. However, a quotation from hn 1 of T 0172/03 even made it into the EPO Guidelines for Examination (G-VII, 2):
The ‘state of the art’ for the purposes of considering inventive step is as defined in Art. 54(2) (see G‑IV, 1). It is to be understood as concerning such kind of information as is relevant to some field of technology (see T 172/03).
It is not that I have an issue with this quote. Even a non-technological ‘state of the art’ may well be relevant to some field of technology, e.g. when a mere business method as ‘state of the art’ is automated, and it is patentable when this is achieved in a new and non-obvious manner. This is how T 2101/12 approached it. But this understanding clearly is not what T 0172/03 advocated for. Incomplete reference to only part of hn 1 of T 0172/03 is misleading, at best. In my opinion, reference to T 0172/03 should be deleted from the Guidelines completely.
The following is just to name a few examples of state of the ‘art’ not taken from what one would typically consider a ‘field of technology’. Have fun.
1. SpongeBob
I once had a hard time to properly communicate to a client that a U.S. examiner held SpongeBob to anticipate his invention:
The cartoon SpongeBog SquarePants Episode 1 ‘Help Wanted’ teaches a shearing tool which is mounted coaxially, rotatable, wherein the shearing tool comprises at least a bent arm wherein the tool has at least one opening.
The examiner referred to the following screenshot:
Drawings and pictures can anticipate claims if they clearly show the structure which is claimed. […] The origin of the drawing is immaterial. The drawings must be evaluated for what they reasonably disclose and suggest to one of ordinary skill in the art.
Luckily, the SpongeBob reference was overcome and the application proceeded to grant; US 8,622,507 B1, see the SpongeBob reference on the title page (‘Other Publications’).
2. The Beano
An entry signal system for pets is described and claimed in GB 2 117 179 A (filed March 18, 1983 and claiming priority of March 18, 1982). The applicant had been faced with the comic strip ‘The Beano’ (No. 2015 of February 28, 1981) as ‘state of the art’:
GB 2 117 179 A, Fig. 7
The Beano, No. 2015 (Feb. 28, 1981)
Reference to ‘The Beano, No. 2015, page 1’ is indicated on the title page of GB 2 117 179 A, under the heading ‘Documents cited’.
3. James Bond
On his fourth mission ‘Thunderball‘, James Bond aimed to recover two stolen warheads. They had been taken by the evil SPECTRE organization. The world was held hostage and Bond headed to Nassau where he was forced into a thrilling confrontation with SPECTRE agent Emilio Largo, on board and around his boat, the Disco Volante. Bond used a special breathing apparatus:
Sean Connery as James Bond in ‘Thunderball’ (1965; Eon Productions, United Artists); Screenshot at approx. 65 min.
This scene was cited as ‘state of the art’ in GB 2 273 053 A; see ‘Documents cited’ on the title page. Indeed, figure 1 of GB’053 shows a stylized special agent with a somewhat similar breathing apparatus:
GB 2 273 053 A, Fig. 1
4. The Holy Bible
If I had prosecuted the following claim (US 10/212,636, claim 2 as filed), I surely had not expected to become best buddies with the examiner:
But being faced with the Holy Bible as ‘state of the art’ might make one’s blood run cold in one’s veins! The rejection read as follows:
[The claim] is rejected under 35 U.S.C. 102(b) as being anticipated by the Holy Bible (Levite, Moses, et al.)
[…] In Genesis, Chapter 41, we are told that Pharaoh appointed Joseph to be his representative and instructed him to enter into contracts to purchase grain. These contracts included an offer with an activity (supply grain) and a benefit (get paid for the grain). Payment was made upon delivery of the grain. The story of Joseph is about 4,500 years old. Neither Joseph nor Pharaoh were considered innovators – the principal / agent relationship is of immemorial antiquity. It no doubt predates civilization itself. The purpose of rejecting this claim using the Bible as reference is to illustrate how ancient the claimed subject matter is. Many of Applicant’s claims could also be rejected using the same reference.
The applicant took up the fight, and his response really is a good read:
On a sidenote, I have once been told (but did not manage to independently verify) that a patent application pertaining to a voice-controlled automated lighting system had been challenged at the EPO with reference to the Holy Bible, too. More particularly, with reference to Genesis, Chapter 1:
And God said, ‘Let there be light’, and there was light.
5. The Law of Agency
Misfortunes never come singly: The claim recited above in (4) had also been rejected in view of the law of agency. The apparently highly motivated examiner held:
Basic agency law teaches that a principal may conduct any business through an agent (representative) that he could conduct in person. This includes entering into contracts. To enter into a contract, one determines a recipient (the other party) and an offer, which includes an activity (e.g., paint my house) and a benefit (consideration). If using an agent, the principal transmits instructions to the agent to provide the offer to the recipient. In any contract, there is the step of determining whether the recipient has performed the activity and providing the benefit to the recipient if the recipient has performed the activity.
6. Donald Duck
In a 1949 Walt Disney comic, a sunken ship had been raised by Donald Duck and his nephews. They pushed ping pong balls into it to lift it up:
A similar technology has actually been used later, for the first time in 1964 when Karl Kroyer lifted a sunken ship with 6’000 sheep right in front of Kuwait’s major fresh water intake in the harbor.
Danish newspaper scan (taken from here; primary source unknown)Prior art database?
Rumor has it that Kroyer’s patent application was rejected in view of the comic strip (as reported e.g. in the newspaper scan above), allegedly by the Dutch patent office — but I could not find any proof for this. Patents have been granted elsewhere (e.g. in Germany and the U.S.).
Nevertheless, I have no doubt at all that this comic strip would have had to be considered as ‘state of the art’ in the assessment of patentability of Kroyer’s invention.
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