The first dissenting opinion: A limping decision on a joint prosthesis

Reading time: 21 minutes

Case No. O2016_012 | Decision of 28 October 2019 | ‘Einschlagbarer Hüftgelenkprothesengrundkörper’

We have reported about the main hearing in this matter on this Blog here.

Implantec’s logo

The patent in suit is EP 1 411 869 B1; see Swissreg and EPO Register for further information. Stemcup asserted that Implantec‘s ANA.NOVA® hybrid socket infringes the patent; see Implantec's ANA.NOVA® product flyer for further information about the allegedly infringing product.

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
  • Claim 2
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°.
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 CPC does 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 …

Giovanni Trappatoni (1998); see full video here

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):

Equateur®; see amplitude-ortho.com for further information

Likewise, novelty over DE 196 06 057 (D5; see e.g. Fig. 2) is also acknowledged.

Inventive step

In a nutshell, the decision holds that the claimed subject-matter is based on an inventive step in view of

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:

EPO Guidelines (2019; G-VII, 13)

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. O2018_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 O2018_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 …

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2016_012 | Decision of 28 October 2019 | ‘Einschlagbarer Hüftgelenkprothesengrundkörper’

Stemcup Medical Products AG
./.
(1) Implantec GmbH
(2) Endoprothetik Schweiz GmbH
(formerly ImplanTec Schweiz GmbH)

Panel of Judges:

    • Dr. Christoph WILLI
    • Dr. Tobias BREMI
    • Dr. Daniel M. ALDER
    • Frank SCHNYDER
    • Dr. Kurt SUTTER

Judge-rapporteur:

    • Dr. Tobias BREMI

Court Clerk:

    • Susanne ANDERHALDEN

Representative(s) of Stemcup :

Representative(s) of Implantec:

    • Dr. Michael RITSCHER (MLL)
    • Dr. Kilian SCHÄRLI (MLL)
    • Herwig MARGOTTI (Schwarz & Partner)
    • Dr. Martin MÜLLNER (Müllner Katschinka), assisting in patent matters
    • Werner ROSHARDT (Keller), assisting in patent matters

DECISION IN FULL

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PATENT IN SUIT

EP 1 411 869 B1 (as initially granted):

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EP(CH) 1 411 869 H1 (after partial waiver):

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

Reading time: 16 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