Expectation of success: Please, be reasonable! (Part 1/2)

Reading time: 11 minutes
Famous dreamer

I have a dream today …

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?

I have a dream that one day we all agree on

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

161 T 60/89, Abl 1992, 268, Nr 3.2.5 ff; T 149/93 vom 23.03.1995, Nr 5; DE-BGH vom 15.05.2012 – Calcipotriol-Monohydrat, GRUR 2012, 803.

I have several issues with that.

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.

Why adding to the confusion when mere application of the could-would approach — which is an integral part of the problem-solution approach — could just be it? The could-would approach (only) asks whether

[…] 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 approach which 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.

The FPC apparently focusses on the predictablity of a success. I do not feel that this is supported by Medimmune v Novartis, nor by the case-law of the Boards of Appeal of the EPO and/or the problem-solution approach. Rather, it reminds me of the focus on predictability in the aftermath of KSR Int’l Co. v. Teleflex Inc.; see MPEP, ¶2141.

I will dig a bit further into this with a review of the case-law of the Boards of Appeal of the EPO in a second post on this issue soon.

/MW

The objective technical problem should not be that much of a problem

Reading time: 9 minutes

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 once in a while, even the basic concepts are challenged. Things are heavily on the move in recent times, e.g. in terms of the assessment of infringement under the DoE or the abolition of the infringement test for SPCs. Still, all this is not too much out of the ordinary.

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:

  1. determining the ‘closest prior art‘;
  2. establishing the ‘objective technical problem‘ to be solved; and
  3. considering whether the claimed invention would have been obvious to the skilled person.
Close, but hard to reach

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 motivation in 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.

Reported by Martin WILMING

O2015_008

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T 59/90

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O2015_018

¶33, translated from French:

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)

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State of the art: Which art has to be considered?

An invention cannot be patented according to Art. 52(1) EPC if it

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:

  1. 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.

  1. 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:

Article 54(2) EPC does not exclude non-technical disclosures from the prior art, in disagreement with Catchword 2 of T 172/03.

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:

SpongeBob SquarePants, Episode 1, ‘Help Wanted’; © Stephen Hillenburg et al. (Nickelodeon)

See the tool in motion here, if this meets your sense of humor; the screenshot was taken at approx. 1:04 min.

I do not think the examiner did a bad job. In fact, the MPEP 2125 (‘Drawings as Prior Art’) fully supports this approach:

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’:

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:

US 10/212,636; claim 2 as filed

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:

Fullscreen view (new tab)

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:

Donald Duck and his nephews in ‘The Sunken Yacht’ (1949); © Carl Banks (Walt Disney)

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.

Reported by Martin WILMING

T 0172/03 – 3.5.1
27 November 2003

Chairman: S. V. Steinbrener
Member: R. R. K. Zimmermann
B. J. Schachenmann
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EPO file wrapper
EPO Register

T 2101/12 – 3.5.6
24 January 2018

Chairman: W. Sekretaruk
Member: G. Zucka
M. Müller
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EPO file wrapper
EPO Register

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