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Thursday, 25 September 2008

The UK-IPO's thoughts on inventive step: "nothing to see here, move along please"

The IPKat thinks that those nice people at the UK-IPO must have had a slow summer, as they have been making work for themselves in thinking yet again about the requirement for an inventive step in patent applications, in particular whether the requirement is being correctly applied across the different fields of invention they deal with. As they say, following a review of inventive step back in 2006 (noted by the IPKat here and here), and the responses they received as a result (noted by the IPKat here), the UK-IPO has been carrying out "further internal work" to assess the consistency of application of the inventive step test in different technological areas.

The UK-IPO have now issued a new report of their thinking following this work, and apparently welcome comments or thoughts on the emerging conclusions. Given that they received only 26 responses to the initial consultation, this is probably being a little hopeful.

The IPKat has taken a look at the report and sees that the conclusions the UK-IPO have arrived at are hardly earth-shattering. They can be quite effectively summarised in the final line, which states: "there does not appear to be a problem of inconsistency in the application of the inventive step test over different technology areas". The report, nonetheless, makes several recommendations on how inventive step should be assessed, particularly in light of the slight revision of the Windsurfing test in Pozzoli. The authors are concerned, although not necessarily troubled, that examiners do not tend to pay much attention to assessing who the hypothetical skilled person might be, and what common general knowledge might be imputed to them, but they think that is not really a problem because lots of inventions are quite complicated.

The IPKat wonders whether users of the system, particularly those with experience of a wide range of subject matter, would agree with these conclusions. Merpel, being pernickity as ever, is troubled by the extensive use of 'CGK' in the report, as it seems to suggest a worrying trend towards an American-style obfuscatory approach to aspects of patent law, which she is very much against. We should all start worrying when they start referring to the NSBUAITAATPA...


Anonymous said...

David, give me a bit of help, please. Lord Hoffmann gives deference to EPO jurisprudence when it's "settled". After 30 years of EPO decision flow on novelty and inventive step, there's nothing new to report in OJEPO in this field. The Problem and Solution Approach is by now so well "settled" as to be boring, indeed unassailable. Yet, not a word of it yet, anywhere in the UK. Could it be that the judges don't use it because it isn't pleaded, and the pleaders don't use it because 1) they don't understand it, 2) English judges don't understand it and therefore 3) the judges want nothing to do with it.

Now, here's an opportunity for the UK to seize the initiative once again. On novelty, the German courts are still pig-headedly marching out of step with the rest of Europe. UK, why don't you expose that perversity, by adopting PSA. Don't worry, it will fit perfectly into English patent litigation. better still, it would then help the EPO to do PSA even better (with due deference to CGK). What am I not seeing right, please?

Eurodisnae said...

Anon – is that you MaxDrei? – some thoughts.

Here’s the Pozzoli steps:

(a) Identify the notional "person skilled in the art"
(b) Identify the relevant common general knowledge of that person;

(2) Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;

(3) Identify what, if any, differences exist between the matter cited as forming part of the "state of the art" and the inventive concept of the claim or the claim as construed;

(4) Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?

PSA is a subset of this, within the scope of the more generally stated steps 3 and 4. PSA. Why do UK courts not make explicit reference to PSA? I don’t really know. Does UK reasoning ever lead to conclusions that would be different from those reached by explicit PSA? I doubt it.

As you recognise, PSA does not explicitly address the issues of step 1. I for one think that it should as I think this is often a failing of the application of PSA in the EPO. It seems you might agree with me.

What baffles me about Pozzoli is the relevance of step 2, independent of step 3. In the Pozzoli decision (paras 17 – 21), Jacob LJ talks about “trying to identify the essence of the claim”, and says “what one is seeking to do is to strip out unnecessary verbiage, to do what Mummery LJ described as make a précis”. But then he says

“In the end what matters is/are the difference(s) between what is claimed and the prior art. It is those differences which form the "step" to be considered at stage (4). So if a disagreement about the inventive concept of a claim starts getting too involved, the sensible way to proceed is to forget it and simply to work on the features of the claim.”

But he also says

“Identification of the concept is not the place where one takes into account the prior art. You are not at this point asking what was new. Of course the claim may identify that which was old (often by a pre-characterising clause) and what the patentee thinks is new (if there is characterising clause) but that does not matter at this point.”

He doesn’t attempt to explain the relationship between 2 and 3/4 at this point.

Applying the steps to the case in point, for step 2 he reaches the conclusion:

“In the end, to my mind, what the skilled man's take-home message from the claim in the context of the patent is, is really no more than "overlap the discs, hold them in the known way via their centres yet space them via a step-like arrangement so they can be got out. I put in the features about holding them via their centres and step-like arrangement because of my view on construction (see below) though actually, for the purposes of obviousness nothing turns on this. The really key bit is overlapping, spacing apart and ready removability. Neither side suggested that either additional feature would add anything material to the inventiveness of the claim.”

He then deals with step 3 in two sentences: “These are now easy. The difference is essentially in the idea of overlapping yet spaced apart rather than side by side (the 2-to1) or concentric (the Brilliant Box).”

I don’t see what step 2 adds to simply comparing the elements of the claim to the closest prior art. It’s what the characterising part of the claim said all along.

For step 4 it is very much a problem and solution approach that is applied: Problem - 2:1 height of a box with side-by-side discs is undesirable. Solution – overlap the discs, other characterising features follow from that. Obvious or not? (answer, yes, for the reasons given in the judgement – basically, the problem had been recognised and the solution was obvious).

Why not PSA? Perhaps because it would expose the redundancy of the inventive concept of step 2, and it will take another visit to the House of Lords to fix it?

Anonymous said...

MaxDrei? Who's that then? I would suggest that Pozzoli is just a warm up to the age-old question "So, was it obvious". EPO PSA never asks "Was it obvious". Instead, it wants to know "What was the objective technical problem?" and it extracts that question from just 2 docs, D1 and the app as filed, that were written before the claim was filed at the Office. So, hindsight doesn't get a look-in. The battle is all about the definition of the OTP. Once that's fixed, the Art 56 result is also fixed. Imagine you are interviewing an engineer from Microsoft for a job with your company. If you were Mr Pozzoli, you would ask that person "Are you creative?". If you were Dr TBA Agrevo, you would instead ask "What performance enhancements did you get with VISTA, relative to XP?". Now, which answer gives you a better chance of deciding whether that engineer gets the job?

Anonymous said...

To me the UKIPO doesn't really examine inventive step. They do a search, of sorts, examine for novelty, and that's about it.

Compared to the EPO or the courts, they seem very lax on inventive step.

I'd almost say UK examination is more of a registration system (unless, of course, your invention happens to use a - sorry dirty word coming - computer).

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