EPO Bleg
If you know of a solid, detailed discussion of the European Patent Office’s “problem solution approach” to the inventive step question, please leave a complete citation to it in the comments.
Many thanks!
Academic commentary about patent law, i.p. law, creativity, and more
May 1, 2007
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Try this:
http://www.bepress.com/cgi/viewcontent.cgi?article=1021&context=ndsip
Comment by Jude — May 2, 2007 @ 5:27 am
Super link. I haven’t read the Paper yet but the supervisors are top class. Will report tomorrow, on the Paper itself.
Comment by MaxDrei — May 2, 2007 @ 3:05 pm
And Max, chime in – by all means – with a recommendation of your own.
Best,
Joe
Comment by Joe — May 2, 2007 @ 3:09 pm
Joe, the problem is that there is nothing better than the materials to be found on the EPO website – its MPEG for example. Trouble is, the EPO Guidelines are something to guide pro Exrs and attorneys. What we need is something to get PSA across to sceptical lawyers in other jurisdictions, seen from their viewpoint.
The Paper above is a worthy treatise on the subject, by an author that I guess has never prosecuted an EPO case in his brief life. I have been at it now for 27 years and am more and more struck by the joy, power and elegance of PSA as an everyday tool to unpick the obviousness puzzle. Here’s my synopsis.
In Europe, a claim is a list of technical FEATURES. If all of them are in a prior artsource you lack novelty, if you have one or more that characterize the claimed subject matter over that reference, you are ready to deploy PSA. You use technical EFFECTS to establish an inventive step (even if the effect is nothing more than the provision of a mere alternative to what D1 discloses).
So, you find your D1 realistic starting point in the published art, you find your characterizing features. You look at what inventor wrote in his app and discern what performance aspect he has and D1 doesn’t. The “objective problem” relative to D1 is how to get that effect out of D1. Does the totality of the published art on the relevant date contain any hint or suggestion to modify D1, by the inclusion of the characterizing feature, when the “Task” is to get that specified technical effect?
Thus, one is toggling between technical features and technical effects. It is this which makes PSA so simple , so powerful, so much in accord with “common sense”, and so piss simple to apply rigorously and expeditiously in everyday practice.
As I keep saying, it’s like riding a bike. Those who can do this tend to pity those who haven’t yet learned. Those who can do it have learned by doing, not by reading about it in a book.
Comment by MaxDrei — May 2, 2007 @ 10:00 pm
Max,
Excellent summary / schematic. Many thanks!
To ask the Anglo-American-centric follow-up question: What are the top two or three exemplary cases on the method?
Best,
Joe
Comment by Joe — May 3, 2007 @ 7:31 am
Joe, I will get back to you on the top cases but meanwhile I’m thinking that, in the civil law system under which PSA matured, there is no doctrine of binding precedent. The law develops by a sort of Darwinian natural selection of the most robust line of legal logic. The Technical Boards of Appeal of the EPO have by now issued literally thousands of PSA decisions, all of equal rank. The EPO practitioner keeps reading ‘em and refining his/her sense of what will fly, when addressing that one of the 22 Boards he/she is currently addressing. It’s still a “work in progress” on, for example, how to settle on the “closest prior art reference” or the extent to which a feature is disclosed when it is not explicit, and how to establish whether a prior disclosure is enabling. Without strict rules of evidence, there is a degree of legal uncertainty that can’t be squeezed out. Scholars might come to the view, in the end, that PSA is incompatible with a common law jurisdiction. I don’t myself see why, but I’m not a scholar. Joe, thanks for the compliment, and I will soon post you some EPO decision numbers. BTW, the EPO only just published a new edition of its Digest of EPO Caselaw book. Small and elegant, it’s a nice read.
Comment by MaxDrei — May 3, 2007 @ 2:25 pm
Joe, I promised you a Decision or two. I will rerstrict myself to my favourite, T570/91. It goes to the so-called “realistic starting point” or “D1″ reference, and highlights the potency in Europe of getting the preamble of the claim just right. The case concerned a piston for a ic engine. The Exr started his obviousness attack from a prior art compressor piston. The technical Board of Appeal pointed out that, if your D1 is a compressor piston then, after any obvious improvement, you will end up with an improved compressor piston, not an ic engine piston. See how it makes a decisive difference, in PSA Europe, whether you claim “A piston….” or “An ic engine piston….”. Often, such a seemingly trivial chsange to the claim preamble frees the way to issue in Europe of a tasty broad claim. This aspect of patent drafting skill is superbly handled by Paul Cole’s beautiful little book on drafting, recently published, which I commend to all readers of this blog.
Comment by MaxDrei — May 5, 2007 @ 10:15 am
Thanks for the citation, and the tip.
(Paul Cole’s book is described here.)
Comment by Joe — May 5, 2007 @ 10:45 am