G - patentability CH7 Flashcards
- General
An invention is considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the Art. Novelty (see G‑VI) and inventive step are different criteria. The question – “is there inventive step?” – only arises if the invention is novel.
- State of the art; date of filing
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. It does not include later published European applications referred to in Art. 54(3). As mentioned in G‑IV, 3, the date of priority counts as the date of filing for the European application being examined on condition that the priority is valid (Art. 89). The state of the art may reside in the relevant common general knowledge, which need not necessarily be in writing and needs substantiation only if challenged (see T 939/92).
- Person skilled in the art
The “person skilled in the art” is presumed to be a skilled practitioner in the relevant field of technology who is possessed of average knowledge and ability (average skilled person). The person skilled in the art is aware of what was common general knowledge in the art at the relevant date (see T 4/98, T 143/94 and T 426/88). The skilled person is also presumed to have had access to everything in the “state of the art”, in particular the documents cited in the search report, and to have been in possession of the means and capacity for routine work and experimentation which are normal for the field of technology in question. If the problem prompts the person skilled in the art to seek its solution in another technical field, the specialist in that field is the person qualified to solve the problem. The skilled person is involved in constant development in the relevant technical field (see T 774/89 and T 817/95). The skilled person may be expected to look for suggestions in neighbouring and general technical fields (see T 176/84 and T 195/84) or even in remote technical fields, if prompted to do so (see T 560/89). Assessment of whether the solution involves an inventive step must therefore be based on that specialist’s knowledge and ability (see T 32/81). There may be instances where it is more appropriate to think in terms of a group of persons, e.g. a research or production team, rather than a single person (see T 164/92 and T 986/96). It is to be borne in mind that the skilled person has the same level of skill for assessing inventive step and sufficient disclosure (see T 60/89, T 694/92 and T 373/94).
3.1 Common general knowledge of the skilled person
Common general knowledge can come from various sources and does not necessarily depend on the publication of a specific document on a specific date. An assertion that something is common general knowledge need only be backed by documentary evidence (for example, a textbook) if this is contested (see G‑IV, 2).
A single publication (e.g. a patent document, but also the content of a technical journal) cannot normally be considered as common general knowledge (see T 475/88). In special cases, articles in technical journals can be representative of common general knowledge (see T 595/90). This applies in particular to articles providing a broad review or survey of a topic (see T 309/88). For the skilled person addressing the problem of bringing together certain starting materials, the conclusions of research on these materials carried out by only a very few manufacturers form part of the relevant general technical knowledge, even if the studies in question have only been published in technical journals (see T 676/94). Another exception is that it can also be the information contained in patent specifications or scientific publications, if the invention lies in a field of research which is so new that the relevant technical knowledge is not yet available from textbooks (see T 51/87).
Basic textbooks and monographs can be considered as representing common general knowledge (see T 171/84); if they contain references which direct the reader to further articles dealing with specific problems, these articles too may be counted as part of such knowledge (see T 206/83). Information does not become common general knowledge because it has been published in a particular textbook, reference work, etc.; on the contrary, it appears in books of this kind because it is already common general knowledge (see T 766/91). This means that the information in such a publication must have already become part of common general knowledge some time before the date of publication.
- Obviousness
Thus the question to consider, in relation to any claim defining the invention, is whether before the filing or priority date valid for that claim, having regard to the art known at the time, it would have been obvious to the person skilled in the art to arrive at something falling within the terms of the claim. If so, the claim is not allowable for lack of inventive step. The term “obvious” means that which does not go beyond the normal progress of technology but merely follows plainly or logically from the prior art, i.e. something which does not involve the exercise of any skill or ability beyond that to be expected of the person skilled in the art. In considering inventive step, as distinct from novelty (see G‑VI, 3), it is fair to construe any published document in the light of knowledge up to and including the day before the filing or priority date valid for the claimed invention and to have regard to all the knowledge generally available to the person skilled in the art up to and including that day.
- Problem-solution approach
In order to assess inventive step in an objective and predictable manner, the so-called “problem-solution approach” is applied.
In the problem-solution approach, there are three main stages:
(i)
determining the “closest prior art”,
(ii)
establishing the “objective technical problem” to be solved, and
(iii)
considering whether or not the claimed invention, starting from the closest prior art and the objective technical problem, would have been obvious to the skilled person.
5.1 Determination of the closest prior art
The closest prior art is that which in one single reference discloses the combination of features which constitutes the most promising starting point for a development leading to the invention. In selecting the closest prior art, the first consideration is that it must be directed to a similar purpose or effect as the invention or at least belong to the same or a closely related technical field as the claimed invention. In practice, the closest prior art is generally that which corresponds to a similar use and requires the minimum of structural and functional modifications to arrive at the claimed invention (see T 606/89).
In some cases there are several equally valid starting points for the assessment of inventive step, e.g. if the skilled person has a choice of several workable solutions, i.e. solutions starting from different documents, which might lead to the invention. If a patent is to be granted, it may be necessary to apply the problem-solution approach to each of these starting points in turn, i.e. in respect of all these workable solutions.
However, applying the problem-solution approach from different starting points, e.g. from different prior-art documents, is only required if it has been convincingly shown that these documents are equally valid springboards. In particular in opposition proceedings the structure of the problem-solution approach is not that of a forum where the opponent can freely develop as many inventive step attacks as desired in the hope that one of said attacks has the chance of succeeding (T 320/15, Reasons 1.1.2).
In the event of refusal or revocation, it is sufficient to show on the basis of one relevant piece of prior art that the claimed subject-matter lacks an inventive step: 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 (see T 967/97, T 558/00, T 21/08, T 308/09 and T 1289/09). This is valid even if the problem identified in a problem-solution reasoning may be different from the one identified by the applicant/patentee.
As a consequence the applicant or proprietor cannot refute the argument that the claimed subject-matter lacks inventive step by submitting that a more promising springboard is available: a piece of prior art on the basis of which the claimed invention is considered non-obvious cannot be “closer” than a document on the basis of which the claimed invention appears obvious, because it is evident in this situation that the former does not represent the most promising springboard from which to arrive at the invention (T 1742/12, Reasons 6.5; T 824/05, Reasons 6.2).
The closest prior art must be assessed from the skilled person’s point of view on the day before the filing or priority date valid for the claimed invention. The examiner must not make an artificial interpretation of the closest prior art based on prior knowledge of the application (see also G‑VII, 8).
In identifying the closest prior art, account is taken of what the applicant acknowledges in the description and claims to be known. Any such acknowledgement of known art is regarded by the examiner as being correct unless the applicant states that a mistake was made (see C‑IV, 7.3(vii)).
5.2 Formulation of the objective technical problem
In the second stage, 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.
Features which cannot be seen to make any contribution, either independently or in combination with other features, to the technical character of an invention cannot support the presence of an inventive step (see T 641/00). Such a situation can occur for instance if a feature only contributes to the solution of a non-technical problem, for instance a problem in a field excluded from patentability. For the treatment of claims comprising technical and non-technical features, see G‑VII, 5.4. The criteria for determining whether a feature, even if non-technical in isolation, contributes to producing a technical effect in the context of the invention are explained in G‑II, 3 and subsections, for different types of subject-matter listed under Art. 52(2).
In the context of the problem-solution approach, the technical problem means the aim and task of modifying or adapting the closest prior art to provide the technical effects that the invention provides over the closest prior art. The technical problem thus defined is often referred to as the “objective technical problem”.
The objective technical problem derived in this way may not be what the applicant presented as “the problem” in the application. The latter may require reformulation, since the objective technical problem is based on objectively established facts, in particular appearing in the prior art revealed in the course of the proceedings, which may be different from the prior art of which the applicant was actually aware at the time the application was filed. In particular, the prior art cited in the search report may put the invention in an entirely different perspective from that apparent from reading the application only. Reformulation might lead to the objective technical problem being less ambitious than originally envisaged by the application. An example of such a case would be where the originally stated problem is the provision of a product, process or method demonstrating some improvement, but where there is no evidence that the claimed subject-matter is thereby improved over the closest prior art uncovered in the search; rather, there is only evidence with respect to more distantly related prior art (or possibly none at all). In this case, the problem has to be reformulated as the provision of an alternative product, process or method. The obviousness of the claimed solution to that reformulated problem must then be assessed in the light of the cited prior art (see T 87/08).
The extent to which such reformulation of the technical problem is possible has to be assessed on the merits of each particular case. As a matter of principle any effect provided by the invention may be used as a basis for the reformulation of the technical problem, as long as said effect is derivable from the application as filed (see T 386/89). It is also possible to rely on new effects submitted subsequently during the proceedings by the applicant, provided that the skilled person would recognise these effects as implied by or related to the technical problem initially suggested (see G‑VII, 11 and T 184/82).
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). Where the claim refers to an aim to be achieved in a non-technical field, however, this aim may legitimately appear in the formulation of the problem as part of the framework of the technical problem to be solved, in particular as a constraint that has to be met (see G‑VII, 5.4 and G‑VII, 5.4.1).
The expression “technical problem” is interpreted broadly; it does not necessarily imply that the technical solution is an improvement to the prior art. Thus the problem could be simply to seek an alternative to a known device or process which provides the same or similar effects or is more cost-effective. A technical problem may be regarded as being solved only if it is credible that substantially all claimed embodiments exhibit the technical effects upon which the invention is based. Criteria for deciding whether lack of reproducibility of the claimed invention is to be treated under Art. 56 or 83 are explained in F‑III, 12.
Sometimes, the objective technical problem must be regarded as an aggregation of a plurality of “partial problems”. This is the case where there is no technical effect achieved by all the distinguishing features taken in combination, but rather a plurality of partial problems is independently solved by different sets of distinguishing features (see G‑VII, 6 and T 389/86).
5.3 Could-would approach
In the third stage the 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 the skilled person would have done so because the prior art provided motivation to do so in the expectation of some improvement or advantage (see T 2/83). Even an implicit prompting or implicitly recognisable incentive is sufficient to show that the skilled person would have combined the elements from the prior art (see T 257/98 and T 35/04). This must have been the case for the skilled person before the filing or priority date valid for the claim under examination.
When an invention requires various steps to arrive at the complete solution of the technical problem, it is nevertheless regarded as obvious if the technical problem to be solved leads the skilled person to the solution in a step-by-step manner and each individual step is obvious in the light of what has already been accomplished and of the residual task still to be solved (see T 623/97 and T 558/00).
5.4 Claims comprising technical and non-technical features
It is legitimate to have a mix of technical and non-technical features appearing in a claim, as is often the case with computer-implemented inventions. The non-technical features may even form a major part of the claimed subject-matter. However, in the light of Art. 52(1), (2) and (3), the presence of an inventive step under Art. 56 requires a non-obvious technical solution to a technical problem (T 641/00, T 1784/06).
When assessing the inventive step of such a mixed-type invention, all those features which contribute to the technical character of the invention are taken into account. These also include the features which, when taken in isolation, are non-technical, but do, in the context of the invention, contribute to producing a technical effect serving a technical purpose, thereby contributing to the technical character of the invention. However, features which do not contribute to the technical character of the invention cannot support the presence of an inventive step (“COMVIK approach”, T 641/00, G 1/19). Such a situation may arise, for instance, if a feature contributes only to the solution of a non-technical problem, e.g. a problem in a field excluded from patentability (see G‑II, 3 and subsections).
The problem-solution approach is applied to mixed-type inventions in such a way as to ensure that inventive step is not acknowledged on the basis of features not contributing to the technical character of the invention, while all those features which do contribute are properly identified and taken into account in the assessment. To this end, where the claim refers to an aim to be achieved in a non-technical field, this aim may legitimately appear in the formulation of the objective technical problem as part of the framework of the technical problem that is to be solved, in particular as a constraint that has to be met (T 641/00; see step (iii)(c) below and G‑VII, 5.4.1).
The steps below outline the application of the problem-solution approach to mixed-type inventions following the COMVIK approach:
(i)
The features which contribute to the technical character of the invention are determined on the basis of the technical effects achieved in the context of the invention (see G‑II, 3.1 to 3.7).
(ii)
A suitable starting point in the prior art is selected as the closest prior art with a focus on the features contributing to the technical character of the invention identified in step (i) (see G‑VII, 5.1).
(iii)
The differences from the closest prior art are identified. The technical effect(s) of these differences, in the context of the claim as a whole, is(are) determined in order to identify from these differences the features which make a technical contribution and those which do not.
(a)
If there are no differences (not even a non-technical difference), an objection under Art. 54 is raised.
(b)
If the differences do not make any technical contribution, an objection under Art. 56 is raised. The reasoning for the objection is that the subject-matter of a claim cannot be inventive if there is no technical contribution to the prior art.
(c)
If the differences include features making a technical contribution, the following applies:
–
The objective technical problem is formulated on the basis of the technical effect(s) achieved by these features. In addition, if the differences include features making no technical contribution, these features, or any non-technical effect achieved by the invention, may be used in the formulation of the objective technical problem as part of what is “given” to the skilled person, in particular as a constraint that has to be met (see G‑VII, 5.4.1).
–
If the claimed technical solution to the objective technical problem is obvious to the person skilled in the art, an objection under Art. 56 is raised.
Determination of the features contributing to the technical character of the invention should be performed for all claim features in step (i) (T 172/03, T 154/04). However, in practice, due to the complexity of this task, the examiner can normally perform the determination in step (i) on a first-glance basis only and perform the analysis at the beginning of step (iii) in a more detailed manner. In step (iii), the technical effects achieved by the differences over the selected closest prior art are determined. The extent to which the differences contribute to the technical character of the invention is analysed in relation to these technical effects. This analysis, limited to the differences, can be performed in a more detailed manner and on a more concrete basis than the one performed at step (i). It may therefore reveal that some features considered in step (i) at first glance as not contributing to the technical character of the invention do, on closer inspection, make such a contribution. The reverse situation is also possible. In such cases, the selection of the closest prior art in step (ii) might need to be revised.
When performing the analysis in steps (i) and (iii) above, care must be taken to avoid missing any features that might contribute to the technical character of the claimed subject-matter, in particular if the examiners reproduce their understanding of the subject-matter of the claim in their own words during the analysis (T 756/06).
The examples in G‑VII, 5.4.2.1 to 5.4.2.4 illustrate the application of the COMVIK approach.
5.4.1 Formulation of the objective technical problem for claims comprising technical and non-technical features
The objective technical problem must be a technical problem which the skilled person in the particular technical field might have been asked to solve at the relevant date. It must not be formulated in such a way as to refer to matters of which the skilled person would only have become aware by knowledge of the solution claimed (G‑VII, 5.2). In other words, the objective technical problem must be so formulated as not to contain pointers to the technical solution. However, this principle only applies to those features of the subject-matter claimed which contribute to the technical character of the invention and hence are part of the technical solution. Merely because some feature appears in the claim does not automatically exclude it from appearing in the formulation of the problem. In particular, where the claim refers to an aim to be achieved in a non-technical field, this aim may legitimately appear in the formulation of the problem as part of the framework of the technical problem that is to be solved, in particular as a constraint that has to be met (T 641/00).
In other words, the formulation of the objective technical problem may refer to features which do not make a technical contribution, or to any non-technical effect achieved by the invention, as a given framework within which the technical problem is posed, for example in the form of a requirements specification provided to the person skilled in a technical field. The aim of formulating the technical problem according to these principles is to ensure that inventive step is acknowledged only on the basis of features which contribute to the technical character of the invention. The technical effects used for formulating the objective technical problem have to be derivable from the application as filed when considered in the light of the closest prior art. They must be achieved over the whole scope of the claim. A claim must therefore be limited in such a way that substantially all embodiments encompassed by the claim show these effects (G 1/19, G‑VII, 5.2).
For technical effects which are not directly achieved by the claimed invention but are only “potential technical effects”, see G‑II, 3.3.2.
Regarding technical effects arising from specific technical implementations where the design of algorithms is motivated by technical considerations of the internal functioning of the computer, see G‑II, 3.3.
In the case of claims directed to a technical implementation of a non-technical method or scheme, in particular of a business method or game rules, a modification to the underlying non-technical method or scheme aimed at circumventing a technical problem, rather than addressing this problem in an inherently technical way, is not considered to make a technical contribution over the prior art (T 258/03, T 414/12). Rather, such a solution constitutes a modification to the constraints given to the technically skilled person tasked with the implementation of the given non-technical method or scheme.
In such cases, consideration must be given to any further technical advantages or effects associated with the specific features of the technical implementation over and above the effects and advantages inherent in the underlying non-technical method or scheme. The latter are at best to be regarded as incidental to that implementation (T 1543/06). They do not qualify as technical effects for the purpose of defining the objective technical problem.
Example
In a game played online over a distributed computer system, the effect of reduction in network traffic obtained by reducing the maximum number of players cannot form the basis for formulating the objective technical problem. It is rather a direct consequence of changing the rules of the game, which is inherent in the non-technical scheme. The problem of network traffic reduction is not addressed by a technical solution but circumvented by the non-technical gaming solution offered. The feature defining the maximum number of players thus constitutes a given constraint which forms part of the non-technical scheme that the skilled person, e.g. a software engineer, would be tasked to implement. Whether the claimed specific technical implementation would have been obvious to the skilled person would still have to be assessed.
- Combining pieces of prior art
In the context of the problem-solution approach, it is permissible to combine the disclosure of one or more documents, parts of documents or other pieces of prior art (e.g. a public prior use or unwritten general technical knowledge) with the closest prior art. However, the fact that more than one disclosure must be combined with the closest prior art in order to arrive at a combination of features may be an indication of the presence of an inventive step, e.g. if the claimed invention is not a mere aggregation of features (see G‑VII, 7).
A different situation occurs where the invention is a solution to a plurality of independent “partial problems” (see G‑VII, 7 and 5.2). Indeed, in such a case it is necessary to separately assess, for each partial problem, whether the combination of features solving the partial problem is obviously derivable from the prior art. Hence, a different document can be combined with the closest prior art for each partial problem (see T 389/86). For the subject-matter of the claim to be inventive, it suffices however that one of these combinations of features involves an inventive step.
In determining whether it would be obvious to combine two or more distinct disclosures, the examiner also has regard in particular to the following:
(i)
whether the content of the disclosures (e.g. documents) is such as to make it likely or unlikely that the person skilled in the art, when faced with the problem solved by the invention, would combine them – for example, if two disclosures considered as a whole could not in practice be readily combined because of inherent incompatibility in disclosed features essential to the invention, the combining of these disclosures is not normally regarded as obvious;
(ii)
whether the disclosures, e.g. documents, come from similar, neighbouring or remote technical fields (see G‑VII, 3);
(iii)
the combining of two or more parts of the same disclosure would be obvious if there is a reasonable basis for the skilled person to associate these parts with one another. It would normally be obvious to combine with a prior-art document a well-known textbook or standard dictionary; this is only a special case of the general proposition that it is obvious to combine the teaching of one or more documents with the common general knowledge in the art. It would, generally speaking, also be obvious to combine two documents one of which contains a clear and unmistakable reference to the other (for references which are considered an integral part of the disclosure, see G‑IV, 5.1 and G‑VI, 1). In determining whether it is permissible to combine a document with an item of prior art made public in some other way, e.g. by use, similar considerations apply.
- Combination vs. juxtaposition or aggregation
The invention claimed must normally be considered as a whole. When a claim consists of a “combination of features”, it is not correct to argue that the separate features of the combination taken by themselves are known or obvious and that “therefore” the whole subject-matter claimed is obvious. However, where the claim is merely an “aggregation or juxtaposition of features” and not a true combination, it is enough to show that the individual features are obvious to prove that the aggregation of features does not involve an inventive step (see G‑VII, 5.2, last paragraph). A set of technical features is regarded as a combination of features if the functional interaction between the features achieves a combined technical effect which is different from, e.g. greater than, the sum of the technical effects of the individual features. In other words, the interactions of the individual features must produce a synergistic effect. If no such synergistic effect exists, there is no more than a mere aggregation of features (see T 389/86 and T 204/06).
For example, the technical effect of an individual transistor is essentially that of an electronic switch. However, transistors interconnected to form a microprocessor synergically interact to achieve technical effects, such as data processing, which are over and above the sum of their respective individual technical effects (see also G‑VII, Annex, 2).
According to T 9/81, patentability has been accepted for a preparation in the form of a “kit-of-parts” in which the individual active compounds, representing known therapeutic agents, are physically separated, provided that the use of those compounds, either simultaneously, separately or sequentially, produces a new and unexpected joint therapeutic effect which cannot be attained by the compounds independently of each other.
- “Ex post facto” analysis
An invention which at first sight appears obvious might in fact involve an inventive step. Once a new idea has been formulated, it can often be shown theoretically how it might be arrived at, starting from something known, by a series of apparently easy steps. The examiner must be wary of ex post facto analysis of this kind. When combining documents cited in the search report, it always has to be borne in mind that the documents produced in the search have, of necessity, been obtained with foreknowledge of what matter constitutes the alleged invention. In all cases the examiner must attempt to visualise the overall state of the art confronting the skilled person before the applicant’s contribution, and must seek to make a “real-life” assessment of this and other relevant factors. The examiner has to take into account all that is known concerning the background of the invention and give fair weight to relevant arguments or evidence submitted by the applicant. If, for example, an invention is shown to be of considerable technical value, and particularly if it provides a technical advantage which is new and surprising and which is not merely achieved as a bonus effect in a “one-way street” situation (see G‑VII, 10.2), and this technical advantage can convincingly be related to one or more of the features included in the claim defining the invention, the examiner has to be hesitant in pursuing an objection that such a claim lacks inventive step.
- Origin of an invention
While the claim must in each case be directed to technical features (and not, for example, merely to an idea), in order to assess whether an inventive step is present it is important for the examiner to bear in mind that an invention may, for example, be based on the following:
(i)
the devising of a solution to a known problem;
Example: the problem of permanently marking farm animals such as cows without causing pain to the animals or damage to the hide has existed since farming began. The solution (“freeze-branding”) consists in applying the discovery that the hide can be permanently depigmented by freezing.
(ii)
the arrival at an insight into the cause of an observed phenomenon (the practical use of this phenomenon then being obvious);
Example: the agreeable flavour of butter is found to be caused by minute quantities of a particular compound. As soon as this insight has been arrived at, the technical application comprising adding this compound to margarine is immediately obvious.
Many inventions are of course based on a combination of the above possibilities – e.g. the arrival at an insight and the technical application of that insight may both involve the use of the inventive faculty.
