Inventive step in Europe and the UPC

Inventive step in Europe and the UPC Abstract The author Paul England PhD is a senior associate and senior professional support lawyer in the IP/IT group of Taylor Wessing, London, specializing in patents. This article The essential question that must be asked by a national court in Europe, when deciding a dispute about inventive step is ‘is the invention obvious?’, as required by Article 56 EPC. However, the approaches taken by these courts to answering this question differ. The reason is that the question can be addressed in many ways, using different sub-tests and guiding factors. The proposed solution to resolving this inconsistency is the Unified Patent Court (UPC). This article examines the key approaches and sub-tests employed in the major centres of European patent litigation—the EPO, France, Germany, the Netherlands and the UK—when attempting to answer the question ‘is the invention obvious?’. It assesses what common ground there is between them that may guide the future UPC. Introduction The law on inventive step is harmonized in Europe by Article 56 of the European Patent Convention (EPC): An invention shall be 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. The essential question that must be asked by a national court in Europe, when deciding a dispute about inventive step, is therefore ‘is the invention obvious?’. However, much like the application of Article 69 EPC,1 the approaches taken by the national courts in Europe to answering this question differ. The reason is that the question ‘is the invention obvious?’ can be addressed in many ways, using different sub-tests and guiding factors. Furthermore, in practice, procedural differences in the national European system can present foreign judges with different evidence by which to assess the facts. The proposed solution to resolving these two sources of inconsistency across many European countries is the Unified Patent Court (UPC), the complete ratification of which is currently held up pending the resolution of a complaint before the German Constitutional Court. This article examines the key approaches and sub-tests employed in the major centres of European patent litigation—the European Patent Office (EPO), France, Germany, the Netherlands and the UK—when attempting to answer the questions ‘is the invention obvious?’, as required by Article 56 EPC. It assesses what, if any, common ground there is between them that may guide the future UPC. The EPO Problem-and-solution approach The Guidelines for Examination in the EPO state:2 Problem-and-solution approach In order to assess inventive step in an objective and predictable manner, the so-called ‘problem-and-solution approach’ should be applied. Thus deviation from this approach should be exceptional. In the problem-and-solution approach, there are three main stages: determining the ‘closest prior art’, establishing the ‘objective technical problem’ to be solved, and 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. The problem-and-solution approach requires that the single closest piece of prior art be identified in Step (1). This is a practical restriction, designed to prevent unacceptably large numbers of prior art documents being cited in oppositions. Although it is possible to combine prior art documents for this purpose, it must be obvious for the skilled person to do so.3 Step (2) is to establish, in an objective way, the technical problem to be solved. Formulating the objective technical problem requires examination of the patent being challenged, the closest prior art and the distinguishing feature(s) between the claimed invention and the closest prior art, and the technical effect resulting from those differences.4 The features that do not make any technical contribution, either alone or in combination, are not relevant.5 Problem-and-solution is a structured approach. It prepares the tribunal to answer the statutory question: is the claimed invention obvious to a person skilled in the art? In problem-and-solution, this question is actually asked at step 3. To answer this, the EPO uses the could-would approach. According to the Guidelines:6 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). The question is not whether the skilled person could have arrived at the invention claimed in the patent by using their common general knowledge to make the adaptions or modifications to the closest prior art that it discloses, but whether they would have done so—would the prior art motivate them to do so in the hope of solving the objective technical problem or in expectation of some improvement or advantage.7 The could-would method adopted by the Technical Boards of Appeal (TBA) therefore has at its heart considerations of motivation. This is put more explicitly as follows:8 In accordance with the case law of the boards of appeal, a course of action could be considered obvious within the meaning of Art. 56 EPC if the skilled person would have carried it out in the expectation of some improvement or advantage…9 In other words, obviousness was not only at hand when the results were clearly predictable but also when there was a reasonable expectation of success…10 Reasonable expectation of success can be applied quite systematically. In T 387/94, for example, starting from the closest prior art, the objective technical problem to be solved was defined as expressing chimeric genes in plant cells. The solution claimed by the patent was the construction of a chimeric gene where the neo determinant is linked to a promoter recognized by the plant cells’ machinery. Whilst it appears to have been accepted that this solution was obvious-to-try, the board of appeal considered, as a separate enquiry, whether there was a reasonable expectation of success that the chimeric gene would be expressed in plant cells.11 It is an indicator of inventive step that the invention provides a solution to a technical problem, which has been sought over a long period of time or satisfies a long-felt need. This may be supported by evidence of commercial success attributable to the technical solution, but commercial success is not an indicator of inventive step taken on its own.12 An unexpected technical effect may be a factor in favour of inventive step if it is derived from the subject matter claimed. However, such an effect (a ‘bonus effect’) will not assist if there are other reasons why the invention is obvious.13 Plausibility In basing its approach to inventive step/obviousness on the solution to the objective technical problem, the EPO has contributed a further approach to obviousness. This is to ask whether there is any technical solution, or contribution, at all. This line of EPO authority has developed on the basis of two key authorities: Triazoles/AgrEvo14 and Factor-9/John Hopkins.15 AgrEvo The AgrEvo case concerned a product claim for a class of chemical compounds useful as herbicides. On appeal, the patent was held sufficient by the TBA because it had been established that all of these compounds could be made. However, the TBA held the patent invalid for obviousness, because there was nothing inventive in making the compounds. Hence, if there was any invention it had to be in finding that the compounds have herbicidal properties. However, it first had to be shown that the compounds did actually have herbicidal properties. The TBA expressed this by saying that there must be a technical effect in substantially all the compounds and this must not be ‘inherently unlikely’, but instead ‘reasonably predictable’, ‘fairly assumed’ or ‘credible’. In this case, the technical effect was the herbicidal properties. However, the patent contained nothing to justify the assertion that all the compounds claimed did have these properties. Therefore, without a technical contribution, the technical problem of the prior art had not been solved and there could be no invention. John Hopkins John Hopkins concerned the validity of claims to growth differentiating factor-9 (GDF-9), in particular polynucleotides encoding polypeptides having GDF-9 activity. The technical problem addressed by the patent application was the identification of a further member of the TGF-β superfamily (a group of polypeptide factors that regulate differentiation processes during embryogenesis). In the patent application, functions of members of the TGF-β superfamily were attributed to GDF-9 on the basis of amino acid sequence homology with the superfamily, but without any technical evidence of equivalent function. The decision for the TBA in John Hopkins considered how much weight could be given to these speculations when assessing inventive step according to the approach of AgrEvo. The TBA concluded: The application does not sufficiently identify this factor as a member of this family ie that there is not enough evidence in the application to make at least plausible that a solution was found to the problem that was purportedly solved. [emphasis added] The requirement in AgrEvo that the patent specification provides a ‘reasonably predictable’, ‘fairly assumed’ or ‘credible’ basis for the technical contribution in a class of compounds is, in John Hopkins, expressed as the need for the technical contribution to be ‘at least plausible’. If it is not plausible, the patent is invalid for obviousness. France French law adopts Article 56 EPC in Article L611-14 IPC. To assess whether the invention is obvious to a person skilled in the art, the French courts adopt the following approach to inventive step: Identify the single closest prior art document to the invention of the patent that performs the same function, together with other pieces of prior art that the skilled person could have taken into consideration; Identify the differences between the patent and the closest prior art document; Starting with the closest prior art and the knowledge of the other prior art documents, assess whether a skilled person who is willing to solve the problem would solve it in the way described by the patent. This is similar to the EPO problem-and-solution approach, but not identical to it. In particular, there is no strict requirement that an objective technical problem be identified. Furthermore, the assessment of the differences identified in Step 2 between the prior art and the invention is based on those features that are novel in the invention (nouveauté restant).16 Like problem-and-solution, the first steps adopted by the French courts actually only provide a structured approach to asking the question of whether the invention is obvious, which is asked in step 3. As regards the final step, the Cour d’Appel, Paris, has confirmed that the issue is not whether the skilled person could obtain the invention by modifications to the prior art but whether, in the expectation of achieving the advantages of that invention, they would be prompted by the prior art to do so.17 The final step therefore requires an analysis resembling obvious-to-try with the expectation of success, which is characteristic of problem-and-solution. Secondary indicia, such as bonus effects, commercial success, long-felt want and overcoming a prejudice in the prior art may also be relevant to assessing inventive step in France.18 Germany German law implements Article 56 EPC in section 4 Patents Act. In order to assess whether the invention is obvious according to this provision, the German Bundesgerichtshof generally asks a number of questions: Which steps would the average person skilled in the art have to carry out to arrive at the teaching of the application or patent? Would the average person skilled in the art have cause to direct his or her thinking in this direction? What in the present case at hand argues for or against the average person skilled in the art carrying out these considerations and arriving at the solution claimed in the application or patent? In taking this more open approach to assessing obviousness, the Bundesgerichtshof has been sceptical of the EPO problem-and-solution method, which it sees as often defining the problem solved, and the contribution of the invention, too narrowly. It is particularly sceptical of the risk of using hindsight, which arises from identifying the prior art on the basis of already knowing the problem solved by the patent. For this reason, the German approach will take into consideration several pieces of prior art, rather than the one closest document.19 These may be read together (‘mosaiced’) if the skilled person knows them and would combine them. The second and third questions allow a number of factors to be included in the analysis, including, but not limited to, the skilled person's motivation. In particular, prior art that ‘teaches away’ from the invention by indicating to the skilled person that an alternative course to that of the invention should be taken can weigh in favour of inventive step.20 However, such factors are unlikely to be determinative unless there are no factors in the prior art pointing the skilled person to the invention. Unexpected ‘bonus effects’ are not sufficient on their own to establish inventive-step if the invention was obvious for another reason. However, such evidence may be combined with other secondary factors, including:21 economic success, based on the invention; satisfaction of a long-felt want; and the passing of time.22 The Netherlands Article 56 EPC is implemented in Dutch law by Article 6 Dutch Patents Act. The approach taken by the Dutch courts to assessing obviousness for the purpose of this provision is primarily the problem-and-solution approach of the EPO;23 although other methods are not entirely excluded: Other than as is sometimes assumed, the problem-and-solution approach is not merely one of the possible methods to assess inventive step, but the most useful method (and customary at the EPO) and so there must be clear reasons if this method is not to be used.24 The Dutch courts also look to whether a skilled person would arrive at the invention rather than whether they could do so.25 However, the Dutch courts have been mindful of the risk that the problem-and-solution approach may introduce hindsight. In particular, the objective technical problem must not be derived from the patent in a way that suggests its solution. The Dutch courts are not as strict as the EPO as regards combinations. Combination of a single piece of prior art with a document said to be common general knowledge is permitted26 without evidence of that common general knowledge. Combinations of prior art are also permitted where there is express or implied incentive for that combination. This is permitted where there is a clear and unmistakeable reference in one prior art document to another. Demonstrating obviousness on the basis of a combination of prior art documents nonetheless remains rare in the Netherlands. Secondary considerations are relevant to an inventive step assessment in the Dutch courts. These include demonstrating that the invention of the patent has satisfied a long-felt want, which previous attempts have failed to achieve.27 The length of time elapsing between a problem arising and the solution provided by the invention of the patent may also be indicative of invention, providing the problem has been on-going due to technical barriers preventing a solution.28 The commercial success of an embodiment protected by the patent may also be relevant, providing it is in combination with another factor, such as long-felt want, and providing the success is attributable to the invention rather than factors such as advertising.29,30 Unexpected ‘bonus’ effects of the invention are relevant only to the extent that there was no reason why it would have been obvious to arrive at the invention.31 The UK The approach taken to assessing inventive step in the UK, under Section 3 Patents Act 1977,32 is well established in Windsurfing/Pozzoli,33 as follows: (a) Identify the notional ‘person skilled in the art’; (b) Identify the relevant common general knowledge of that person; Identify the inventive concept of the claim in question or, if that cannot readily be done, construe it; 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; 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 a degree of invention? The Pozzoli/Windsurfing approach does not tie the prior art to the patent-in-suit by reference to a relationship of a solution to an objective technical problem. Therefore, it does not carry the same risk of hindsight that comes from defining the problem implicitly by reference to the patent. To further guarantee this, step (4) expressly rules out any consideration of the claimed invention. Like problem-and-solution, the Windsurfing /Pozzoli approach to the question of obviousness does not actually answer the question itself. Instead, it provides a structured approach with the question of obviousness addressed at step four. The courts have emphasized that the correct question is that laid down in the statute, namely whether the invention was obvious to the person skilled in the art. The court has emphasized that paraphrases of the statutory test in other cases do not assist.34 Nonetheless, sub-tests continue to be used. The most prevalent of these is to ask whether the invention was ‘obvious-to-try’ in the expectation of some success. The level of that success has been set by the House of Lords,35 in which it was held that ‘obvious-to-try’ is useful only in a case in which there is a ‘fair expectation of success’. This is in apparent contrast to an earlier Patents Court authority36 in which it had been held that the number of theoretical routes open to a researcher, no matter how many, had no logical consequences for whether any one of them was more obvious than the other—it would be more-or-less obvious to pursue any and all of them, in the absence of a firm reason not to. Other sub-tests used in the UK include the ‘ob-via’—‘lying in the road’—test, and the ‘workshop variations’ approach (see below). The court will also be interested in whether there is a ‘lion in the path’; a perceived problem that would deter the skilled person from taking the path the inventor took to arrive at the invention. The approach of examining whether a patent makes a plausible technical contribution, derived from the EPO authority of AgrEvo (see above), has also been applied in the UK by the House of Lords37. In practice, the court will take a multi-factorial approach depending on the evidence before it: The question of obviousness must be considered on the facts of each case. The court must consider the weight to be attached to any particular factor in the light of all the relevant circumstances. These may include such matters as the motive to find a solution to the problem the patent addresses, the number and extent of the possible avenues of research, the effort involved in pursuing them and the expectation of success.38 Furthermore, secondary evidence on matters such as long-felt want and commercial success is admissible in the UK, but it will be of limited value by comparison with the primary evidence. Criticism of problem-and-solution As noted above, the national courts have been mindful of a number of limitations to the EPO’s problem-and-solution approach. These were summarized by Jacob LJ in Actavis UK Limited v Novartis, as follows.39 The hindsight problem The single closet prior art document rule in the problem-and-solution approach can establish an artificial ‘objective technical problem’, which the inventor may never have understood from the prior art in the same way, or have even been aware of. Much therefore depends on how the objective technical problem is derived. The particular risk is that by defining an objective technical problem, the solution is inferred. This is a hindsight risk, as the Guidelines for Examination in the EPO acknowledge and warn against:40 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 on inventive activity (T 229/85, OJ 6/1987, 237). It is, as discussed above, a problem that has also been identified at a national level. The hindsight problem is exemplified by the ‘Anywayup Cup’ case discussed in the next section. Perceiving that there is a problem It has also been suggested that the problem-and-solution approach does not cope well with cases where the invention involves perceiving that there is a problem in the first place, or in appreciating that a known problem, perhaps ‘put up with’ for a long time, can be solved. An example of this is the ‘Anywayup Cup’ case.41 Babies’ drinker cups had been known for years, as was the fact that a cup leaked if dropped. This was without anyone thinking to solve the problem. The patentee had the technically trivial idea of fitting such cups with a known kind of valve to prevent them leaking. This invention was held in the UK to be non-obvious. However, it has been doubted that the invention would be held non-obvious using the problem-and-solution approach, because by identifying the objective technical problem as leakage and suggesting it can be solved, the answer is already half suggested: put in a valve. In other words, once the really inventive part (the problem) has been identified for step 2 of the problem-and-solution approach, the ‘invention’ in step 3 inevitably looks obvious. The 5¼-inch plate paradox A further potential weakness of problem-and-solution that has been suggested is its unsuitability for patents of the type illustrated by the 5¼-inch plate paradox.42 This concerns a hypothetical patent claim for a plate of diameter 5¼ inches. No-one can find a plate of that particular diameter in the prior art. Does this mean (a) it is novel; and (b) it is non-obvious, because there is no particular reason to choose that diameter? The conclusion that the plate is patentable is too absurd to be correct. However, the problem-and-solution analysis cannot assist in coming to this conclusion, because there is no problem and therefore no solution.43 Criticism of motivational tests It has also been explained that obvious-to-try, as an approach focused on the motivations of the skilled person, has limitations:44 On its face, this produces an unworkable or irrational test. If the reward for finding a solution to a problem and securing a monopoly for that solution is very high, then it may well be worthwhile for large players to examine all potential avenues to see if one gives the right result, even though the prospects of any one of them succeeding are much less than 50/50. What makes something worth trying is the outcome of a simple risk to reward calculation. Yet, if the reward is very large, the avenues worth trying will be expanded accordingly. So, the more commercially attractive the solution and the more pressing the public clamour for it, the harder it will be to avoid an obviousness attack. In those circumstances a solution which is quite low down a list of alternatives, all of which are more or less worth trying, will fail for obviousness; … The more the potential reward and the public demand, the more the motivation and the more likely the invention is to be obvious. The traditional obvious-to-try analysis is rooted in a lower-tech age rather than one in which technology is increasingly intensive:45 During the last forty years the volume of high-tech research has increased enormously, especially in the fields of pharmaceuticals and biotechnology. The resources committed to research are enormous, because the potential rewards in world-wide markets are so great. Competition is fierce. In this climate ‘obvious to try’ has tended to take on a life of its own as an important weapon in the armoury of those challenging the validity of a patent. The risk is that, in the present age, the obvious-to-try test may become a tool favouring patent revocation. This is not only a concern for the UK obvious-to-try approach, but also for the EPO could/would analysis and any system that examines the motivations of the skilled person. An alternative basis for assessing inventive step The ‘workshop variations’ approach It has been observed that the doctrine of obviousness is intended to ensure that the public is not prevented from doing anything which is merely an obvious extension or workshop variation of what is already known at the priority date.46 If the patentee has come up with a solution to a problem which is no more than an obvious extension or workshop variation to the prior art, they cannot have a monopoly for that solution; whether or not the skilled man would be likely to have known of the prior art in question. The notional addressee is likely to want to use materials readily at hand to make essentially the same thing as is disclosed in the prior art. That is sufficient motivation and the use of those materials is, accordingly, obvious. Third parties are entitled to use any ‘natural extension’ or ‘obvious variant’ of the patentee’s concept if they are the type of workshop modification or alternative discussed above.47 An example of what is meant by ‘workshop variation’ is found in the case of Windsurfing International Inc v Tabur Marine (Great Britain) Ltd.48 The Windsurfing example The invention at issue in Windsurfing was a windsurfing board. Amongst the prior art cited against the patent, was the use by Peter Chilvers, a 12 year old, of his own home-made sailboard, which he sailed along an inlet at Hayling Island on summer weekends during two consecutive years. Based on a description of the Chilvers board, the Court of Appeal had to consider one point of difference: the Chilvers board had used a straight and ‘primitive’ split-boom, whereas the patented invention disclosed arcuate booms. In order to determine whether an arcuate boom was obvious over a split-boom the court examined the policy behind the invention requirement:49 … it would be wrong to prevent a man from doing something which is merely an obvious extension of what he has been doing or of what was known in the art before the priority date of the patent granted. The Court of Appeal asked itself upon what ground the substitution of a wishbone boom for a primitive, split-boom could be said to be not obvious. Only, it thought, on the ground that the hypothetical skilled man would have been so uninterested in this child’s plaything that he would not have applied his mind to the matter at all. On the evidence, the court thought it clear that any skilled adult who applied his mind to Chilvers’ device would at once have seen it as obvious that the unconventional and primitive split boom devised by Chilvers ought to be replaced by the conventional wishbone boom. The wishbone boom, even though not in everyday use, would then have been familiar to anyone skilled in yachtbuilding. In particular, issues of obvious substitution were at the forefront of the court’s reasoning: anybody with a reasonable degree of sailing knowledge looking at the Chilvers sailboard must have at once seen that the perfectly well known device of a wishbone boom would be a substitute—a workshop variation—for the primitive split boom actually employed. An answer to the 5¼-inch plate problem According to the workshop variations approach, trivial limitations, such as specifying a plate diameter for no technical reason are treated as obvious because if it is known to make a 5-inch plate then making a 5¼-inch plate is a purely arbitrary and non-technical workshop modification. Workshop variations in the EPO The example of Genentech/Expression in Yeast50 demonstrates how a similar approach to workshop variations has been used in the context of a problem-and-solution analysis. Genentech concerned the construction of alternative yeast expression vectors suitable for expressing in yeast any exogenous gene of choice. The TBA commented that, in acting on the disclosure in the prior art, the skilled person ‘within the known design procedures’ would readily seek appropriate, manifest changes, modifications or adjustments which involve little trouble or work and no risks or only calculable risks, especially for the sake of obtaining a more handy or convenient product or simplifying a procedure.51 Common ground and the UPC What common ground is there between the approaches to determining inventive step/obviousness in the national courts of Europe, and how should these be applied by the future UPC? The courts of a number of countries allow evidence to be adduced on secondary considerations, in order to assist the court on the issue of inventive step—such evidence includes long-felt want, commercial success, prejudice against the invention at the priority date, the elapse of time in which a problem is not solved, etc. The weight given to such evidence will differ. However, the primary question in any assessment of inventive step is that posed in Article 56 EPC: is the invention obvious to a person skilled in the art? The EPO, French, German, Dutch and UK courts all provide structured approaches to this question, although they do not answer the question itself: in France, the UK and Germany, this question is asked as the final step of the structured approach. In order to answer the obviousness question the courts share the method of examining the motivations of the skilled person to make the invention at the priority date. In the EPO and the Netherlands, it is the question of whether the skilled person would (not could) arrive at the solution to the technical objective problem on the basis of the closest prior art. The motivation of a reasonable expectation of success is relevant to this. Similarly, in France it is asked whether a skilled person who is willing to solve the problem would solve it in the way described by the patent. In Germany, motivation is apparent in its three-step test: would the average person skilled in the art have cause to direct his or her thinking in the direction of the invention and what are the factors for and against them doing so? In the UK, the skilled person’s motivation is examined when it is asked whether it was obvious to try the invention with a fair expectation of success. However, the UK and Germany are arguably more open to including other factors that the skilled person would consider, such as elements in the prior art that teach away from the invention and prejudices of mindset. As has so often be remarked in all of these countries, however, motivational questions are only applicable where the person skilled in the art has a particular problem in mind that they want to solve. This is because the motivation must be the solution of some recognized problem or meet some recognized need52—one cannot be motivated to solve a problem they do not know they have. Tests relying on an examination of the skilled person’s motivations for success have also been criticized for tending towards findings of obviousness in the contemporary environment, where research and development is intensive and the pressure to find solutions is high. There are alternative ways of addressing inventive step, which focus on the nature of the technical contribution of a patent. In appropriate case, the concept of invention can be viewed as encompassing variants sharing functional characteristics—an approach familiar from scope of protection of claim assessments.53 This analysis lends itself to a workshop variation approach which is not based on the identification of an objective technical problem or the motivation of the skilled person, but instead uses technical properties to identify whether variant claimed invention is essentially a substitute or extension of the prior art. The technical contribution of an invention is also the subject of the AgrEvo/John Hopkins plausibility test, which asks whether there is a plausible technical contribution at all. If there is not, then there cannot be an invention. It is applied in the EPO and Netherlands and has also featured in the UK. It can be seen from the above discussion that the future UPC has open to it a range of approaches to determining the statutory question on inventive step: ‘is the invention obvious?’. These are based on the motivations of the skilled person, plausibility and the substance of the technical advances claimed by the invention. There is, however, no one-size-fits-all approach and nor should there be. That means the UPC should not limit itself to the problem-and-solution analysis or motivation tests. Instead, the UPC should assess obviousness with flexibility, using all the appropriate factors discussed, according to the particular facts of the case. Footnotes 1 Paul England, ‘The Scope of Protection of Patent Claims’, Journal of Intellectual Property Law & Practice, 2016, Vol. 11, No. 9. 2 Guidelines for Examination in the EPO, Part G, Patentability, Chapter VII-2, 5, November 2015. 3 Guidelines for Examination in the EPO, Part G, Patentability, Chapter VII-8, 6, November 2015. 4 Ibid, Chapter VII-3, 5.2, November 2015; and see T 606/89. 5 For example, see T 641/00. 6 Guidelines for Examination in the EPO, Part G, Patentability, Chapter VII-5, 5.3, November 2015. 7 See, for example, T 2/83. 8 Case Law of the Boards of Appeal (7th edition), September 2013, p. 184. 9 T 2/83. 10 T 149/93. 11 See also T 187/93, which states that even if it was obvious for the skilled person to try an experiment, they would not necessarily have any reasonable expectation of success when embarking on it. 12 Guidelines for Examination in the EPO, Part G, Chapter VII-12, 10.2, November 2015. 13 Ibid, Chapter VII-11, 10.2, November 2015. 14 T 0939/92. 15 (T 1329/04) [2006] EPOR 8. 16 Sté EFSA v Gérard CECCHI, Cour d’Appel, Paris, 14 April 1995, PIBD 1995, III, 320. 17 Cour d’Appel, Paris, SAS Sandoz v Eli Lilly and Company, 13 January 2012, Case no. 10/17727. 18 Tribunal de Grande Instance, Paris, Hutchison/Gomma Barre Thomas, 10 March 2009. 19 BGH GRUR 2009, 382—Olanzapine. 20 BGH, Stoβwellen—Lithotripter, XZR 115/96. 21 Pagenberg, ‘Beweisanzeichen auf dem Prüfstand – Für eine objective Prüfung auf erfinderische Tägigkeit’, GRUR Int. 1986, 83 ff. 22 BGH, Ziehmaschinenzugeinheit II, X ZR 49/09, 29 June 2010. 23 See Hoge Raad, Rockwool/Isover, 15 February 2008 and the Court of Appeal, The Hague, Novogen Research/Care for Women, 3 July 2008. 24 District Court of The Hague, Geotechnics/Meeuwissen, 15 April 2003. 25 Hoge Raad, Rockwool/Isover, 15 February 2008. 26 Ibid; see also District Court, The Hague, Van Diepen/Pronk, 2 July 2008. 27 District Court, The Hague, Bornemann/Houttuin, 2 July 2003. 28 Court of Appeal, The Hague, Tetra/Meyn, 30 September 1999. 29 Court of Appeal, The Hague, Warner-Lambert/Ranbaxy, 28 February 2008. 30 Reference should be made to the Case Law of the Boards of Appeal of the EPO, 7th edition, September 2013. 31 District Court, The Hague, 3M/Avery, 25 April 2007. 32 Section 3 implements Article 56 EPC in UK law. 33 Pozzoli SPA v BDMO SA [2007] FSR 37, at para 23. 34 PLG Research Limited & Anor v Arnold International Limited & Ors [1995] FSR 116. 35 Conor Medsystems Incorporated v Angiotech Pharmaceuticals Incorporated and others [2008] UKHL 49, at para 48. 36 Brugger and others v Medic-Aid Ltd [1996] RPC 635, at 661. 37 Conor Medsystems Inc v Angiotech Pharma. Inc [2008] UKHL 49. 38 Per Kitchin J, Generics (UK) Limited & Ors v H. Lundbeck A/S [2007] EWHC 1040 (Pat), para. 74. 39 See Jacob LJ in Actavis UK Limited v Novartis AG [2010] EWCA Civ 82. 40 Guidelines to Examination in the EPO, Part G, Patentability, Chapter VII-3, 5.2, November 2014. 41 Haberman v Jackel International [1999] FSR 683. 42 See Jacob LJ in Actavis UK Limited v Novartis AG [2010] EWCA Civ 82. 43 Arguably, the EPO could deal with facts of this kind on the basis that a 5¼-inch plate is ‘within the known design procedures’ for plate making. See Genentech/Expression in Yeast T455/91 [1996] EPOR 85, as discussed later in this article. 44 Reflecting Sir Hugh Laddie’s comments in ‘Patents—What’s Invention Got to Do With It?’, in D. Vaver and L. Bently (eds), Intellectual Property in the New Millennium (Cambridge University Press, Cambridge, 2004), p. 93. 45 Lord Walker, Conor Medsystems Incorporated v Angiotech Pharmaceuticals Incorporated and others [2008] UKHL 49. 46 PLG Research Limited & Another v Ardon International Limited & Others [1995] FSR 116 at 136. 47 Explained by Laddie J in Hoechst v Celanese Corp v BP Chemicals Ltd [1997] FSR 547, at 573. 48 [1985] RPC 59. 49 Per Oliver LJ, ibid, at 77. 50 T455/91 [1996] EPOR 85. 51 The TBA limits the scope of ‘known design procedures’ to very minor changes, because the skilled person in the field would be aware that even small structural changes in a product (such as a vector, a protein and/or a DNA sequence), or in a procedure, can produce dramatic functional changes. 52 See Cornish & Llewelyn, Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights, 5th edition (Sweet & Maxwell, London, 2003), at para. 5-49 and the reference therein to Beecham’s (Amoxycillin) Application [1980] RPC 261, at 290. 53 England, ‘The Scope’. © The Author(s) 2018. Published by Oxford University Press. All rights reserved. This article is published and distributed under the terms of the Oxford University Press, Standard Journals Publication Model (https://academic.oup.com/journals/pages/about_us/legal/notices) http://www.deepdyve.com/assets/images/DeepDyve-Logo-lg.png Journal of Intellectual Property Law & Practice Oxford University Press

Inventive step in Europe and the UPC

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Abstract

Abstract The author Paul England PhD is a senior associate and senior professional support lawyer in the IP/IT group of Taylor Wessing, London, specializing in patents. This article The essential question that must be asked by a national court in Europe, when deciding a dispute about inventive step is ‘is the invention obvious?’, as required by Article 56 EPC. However, the approaches taken by these courts to answering this question differ. The reason is that the question can be addressed in many ways, using different sub-tests and guiding factors. The proposed solution to resolving this inconsistency is the Unified Patent Court (UPC). This article examines the key approaches and sub-tests employed in the major centres of European patent litigation—the EPO, France, Germany, the Netherlands and the UK—when attempting to answer the question ‘is the invention obvious?’. It assesses what common ground there is between them that may guide the future UPC. Introduction The law on inventive step is harmonized in Europe by Article 56 of the European Patent Convention (EPC): An invention shall be 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. The essential question that must be asked by a national court in Europe, when deciding a dispute about inventive step, is therefore ‘is the invention obvious?’. However, much like the application of Article 69 EPC,1 the approaches taken by the national courts in Europe to answering this question differ. The reason is that the question ‘is the invention obvious?’ can be addressed in many ways, using different sub-tests and guiding factors. Furthermore, in practice, procedural differences in the national European system can present foreign judges with different evidence by which to assess the facts. The proposed solution to resolving these two sources of inconsistency across many European countries is the Unified Patent Court (UPC), the complete ratification of which is currently held up pending the resolution of a complaint before the German Constitutional Court. This article examines the key approaches and sub-tests employed in the major centres of European patent litigation—the European Patent Office (EPO), France, Germany, the Netherlands and the UK—when attempting to answer the questions ‘is the invention obvious?’, as required by Article 56 EPC. It assesses what, if any, common ground there is between them that may guide the future UPC. The EPO Problem-and-solution approach The Guidelines for Examination in the EPO state:2 Problem-and-solution approach In order to assess inventive step in an objective and predictable manner, the so-called ‘problem-and-solution approach’ should be applied. Thus deviation from this approach should be exceptional. In the problem-and-solution approach, there are three main stages: determining the ‘closest prior art’, establishing the ‘objective technical problem’ to be solved, and 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. The problem-and-solution approach requires that the single closest piece of prior art be identified in Step (1). This is a practical restriction, designed to prevent unacceptably large numbers of prior art documents being cited in oppositions. Although it is possible to combine prior art documents for this purpose, it must be obvious for the skilled person to do so.3 Step (2) is to establish, in an objective way, the technical problem to be solved. Formulating the objective technical problem requires examination of the patent being challenged, the closest prior art and the distinguishing feature(s) between the claimed invention and the closest prior art, and the technical effect resulting from those differences.4 The features that do not make any technical contribution, either alone or in combination, are not relevant.5 Problem-and-solution is a structured approach. It prepares the tribunal to answer the statutory question: is the claimed invention obvious to a person skilled in the art? In problem-and-solution, this question is actually asked at step 3. To answer this, the EPO uses the could-would approach. According to the Guidelines:6 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). The question is not whether the skilled person could have arrived at the invention claimed in the patent by using their common general knowledge to make the adaptions or modifications to the closest prior art that it discloses, but whether they would have done so—would the prior art motivate them to do so in the hope of solving the objective technical problem or in expectation of some improvement or advantage.7 The could-would method adopted by the Technical Boards of Appeal (TBA) therefore has at its heart considerations of motivation. This is put more explicitly as follows:8 In accordance with the case law of the boards of appeal, a course of action could be considered obvious within the meaning of Art. 56 EPC if the skilled person would have carried it out in the expectation of some improvement or advantage…9 In other words, obviousness was not only at hand when the results were clearly predictable but also when there was a reasonable expectation of success…10 Reasonable expectation of success can be applied quite systematically. In T 387/94, for example, starting from the closest prior art, the objective technical problem to be solved was defined as expressing chimeric genes in plant cells. The solution claimed by the patent was the construction of a chimeric gene where the neo determinant is linked to a promoter recognized by the plant cells’ machinery. Whilst it appears to have been accepted that this solution was obvious-to-try, the board of appeal considered, as a separate enquiry, whether there was a reasonable expectation of success that the chimeric gene would be expressed in plant cells.11 It is an indicator of inventive step that the invention provides a solution to a technical problem, which has been sought over a long period of time or satisfies a long-felt need. This may be supported by evidence of commercial success attributable to the technical solution, but commercial success is not an indicator of inventive step taken on its own.12 An unexpected technical effect may be a factor in favour of inventive step if it is derived from the subject matter claimed. However, such an effect (a ‘bonus effect’) will not assist if there are other reasons why the invention is obvious.13 Plausibility In basing its approach to inventive step/obviousness on the solution to the objective technical problem, the EPO has contributed a further approach to obviousness. This is to ask whether there is any technical solution, or contribution, at all. This line of EPO authority has developed on the basis of two key authorities: Triazoles/AgrEvo14 and Factor-9/John Hopkins.15 AgrEvo The AgrEvo case concerned a product claim for a class of chemical compounds useful as herbicides. On appeal, the patent was held sufficient by the TBA because it had been established that all of these compounds could be made. However, the TBA held the patent invalid for obviousness, because there was nothing inventive in making the compounds. Hence, if there was any invention it had to be in finding that the compounds have herbicidal properties. However, it first had to be shown that the compounds did actually have herbicidal properties. The TBA expressed this by saying that there must be a technical effect in substantially all the compounds and this must not be ‘inherently unlikely’, but instead ‘reasonably predictable’, ‘fairly assumed’ or ‘credible’. In this case, the technical effect was the herbicidal properties. However, the patent contained nothing to justify the assertion that all the compounds claimed did have these properties. Therefore, without a technical contribution, the technical problem of the prior art had not been solved and there could be no invention. John Hopkins John Hopkins concerned the validity of claims to growth differentiating factor-9 (GDF-9), in particular polynucleotides encoding polypeptides having GDF-9 activity. The technical problem addressed by the patent application was the identification of a further member of the TGF-β superfamily (a group of polypeptide factors that regulate differentiation processes during embryogenesis). In the patent application, functions of members of the TGF-β superfamily were attributed to GDF-9 on the basis of amino acid sequence homology with the superfamily, but without any technical evidence of equivalent function. The decision for the TBA in John Hopkins considered how much weight could be given to these speculations when assessing inventive step according to the approach of AgrEvo. The TBA concluded: The application does not sufficiently identify this factor as a member of this family ie that there is not enough evidence in the application to make at least plausible that a solution was found to the problem that was purportedly solved. [emphasis added] The requirement in AgrEvo that the patent specification provides a ‘reasonably predictable’, ‘fairly assumed’ or ‘credible’ basis for the technical contribution in a class of compounds is, in John Hopkins, expressed as the need for the technical contribution to be ‘at least plausible’. If it is not plausible, the patent is invalid for obviousness. France French law adopts Article 56 EPC in Article L611-14 IPC. To assess whether the invention is obvious to a person skilled in the art, the French courts adopt the following approach to inventive step: Identify the single closest prior art document to the invention of the patent that performs the same function, together with other pieces of prior art that the skilled person could have taken into consideration; Identify the differences between the patent and the closest prior art document; Starting with the closest prior art and the knowledge of the other prior art documents, assess whether a skilled person who is willing to solve the problem would solve it in the way described by the patent. This is similar to the EPO problem-and-solution approach, but not identical to it. In particular, there is no strict requirement that an objective technical problem be identified. Furthermore, the assessment of the differences identified in Step 2 between the prior art and the invention is based on those features that are novel in the invention (nouveauté restant).16 Like problem-and-solution, the first steps adopted by the French courts actually only provide a structured approach to asking the question of whether the invention is obvious, which is asked in step 3. As regards the final step, the Cour d’Appel, Paris, has confirmed that the issue is not whether the skilled person could obtain the invention by modifications to the prior art but whether, in the expectation of achieving the advantages of that invention, they would be prompted by the prior art to do so.17 The final step therefore requires an analysis resembling obvious-to-try with the expectation of success, which is characteristic of problem-and-solution. Secondary indicia, such as bonus effects, commercial success, long-felt want and overcoming a prejudice in the prior art may also be relevant to assessing inventive step in France.18 Germany German law implements Article 56 EPC in section 4 Patents Act. In order to assess whether the invention is obvious according to this provision, the German Bundesgerichtshof generally asks a number of questions: Which steps would the average person skilled in the art have to carry out to arrive at the teaching of the application or patent? Would the average person skilled in the art have cause to direct his or her thinking in this direction? What in the present case at hand argues for or against the average person skilled in the art carrying out these considerations and arriving at the solution claimed in the application or patent? In taking this more open approach to assessing obviousness, the Bundesgerichtshof has been sceptical of the EPO problem-and-solution method, which it sees as often defining the problem solved, and the contribution of the invention, too narrowly. It is particularly sceptical of the risk of using hindsight, which arises from identifying the prior art on the basis of already knowing the problem solved by the patent. For this reason, the German approach will take into consideration several pieces of prior art, rather than the one closest document.19 These may be read together (‘mosaiced’) if the skilled person knows them and would combine them. The second and third questions allow a number of factors to be included in the analysis, including, but not limited to, the skilled person's motivation. In particular, prior art that ‘teaches away’ from the invention by indicating to the skilled person that an alternative course to that of the invention should be taken can weigh in favour of inventive step.20 However, such factors are unlikely to be determinative unless there are no factors in the prior art pointing the skilled person to the invention. Unexpected ‘bonus effects’ are not sufficient on their own to establish inventive-step if the invention was obvious for another reason. However, such evidence may be combined with other secondary factors, including:21 economic success, based on the invention; satisfaction of a long-felt want; and the passing of time.22 The Netherlands Article 56 EPC is implemented in Dutch law by Article 6 Dutch Patents Act. The approach taken by the Dutch courts to assessing obviousness for the purpose of this provision is primarily the problem-and-solution approach of the EPO;23 although other methods are not entirely excluded: Other than as is sometimes assumed, the problem-and-solution approach is not merely one of the possible methods to assess inventive step, but the most useful method (and customary at the EPO) and so there must be clear reasons if this method is not to be used.24 The Dutch courts also look to whether a skilled person would arrive at the invention rather than whether they could do so.25 However, the Dutch courts have been mindful of the risk that the problem-and-solution approach may introduce hindsight. In particular, the objective technical problem must not be derived from the patent in a way that suggests its solution. The Dutch courts are not as strict as the EPO as regards combinations. Combination of a single piece of prior art with a document said to be common general knowledge is permitted26 without evidence of that common general knowledge. Combinations of prior art are also permitted where there is express or implied incentive for that combination. This is permitted where there is a clear and unmistakeable reference in one prior art document to another. Demonstrating obviousness on the basis of a combination of prior art documents nonetheless remains rare in the Netherlands. Secondary considerations are relevant to an inventive step assessment in the Dutch courts. These include demonstrating that the invention of the patent has satisfied a long-felt want, which previous attempts have failed to achieve.27 The length of time elapsing between a problem arising and the solution provided by the invention of the patent may also be indicative of invention, providing the problem has been on-going due to technical barriers preventing a solution.28 The commercial success of an embodiment protected by the patent may also be relevant, providing it is in combination with another factor, such as long-felt want, and providing the success is attributable to the invention rather than factors such as advertising.29,30 Unexpected ‘bonus’ effects of the invention are relevant only to the extent that there was no reason why it would have been obvious to arrive at the invention.31 The UK The approach taken to assessing inventive step in the UK, under Section 3 Patents Act 1977,32 is well established in Windsurfing/Pozzoli,33 as follows: (a) Identify the notional ‘person skilled in the art’; (b) Identify the relevant common general knowledge of that person; Identify the inventive concept of the claim in question or, if that cannot readily be done, construe it; 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; 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 a degree of invention? The Pozzoli/Windsurfing approach does not tie the prior art to the patent-in-suit by reference to a relationship of a solution to an objective technical problem. Therefore, it does not carry the same risk of hindsight that comes from defining the problem implicitly by reference to the patent. To further guarantee this, step (4) expressly rules out any consideration of the claimed invention. Like problem-and-solution, the Windsurfing /Pozzoli approach to the question of obviousness does not actually answer the question itself. Instead, it provides a structured approach with the question of obviousness addressed at step four. The courts have emphasized that the correct question is that laid down in the statute, namely whether the invention was obvious to the person skilled in the art. The court has emphasized that paraphrases of the statutory test in other cases do not assist.34 Nonetheless, sub-tests continue to be used. The most prevalent of these is to ask whether the invention was ‘obvious-to-try’ in the expectation of some success. The level of that success has been set by the House of Lords,35 in which it was held that ‘obvious-to-try’ is useful only in a case in which there is a ‘fair expectation of success’. This is in apparent contrast to an earlier Patents Court authority36 in which it had been held that the number of theoretical routes open to a researcher, no matter how many, had no logical consequences for whether any one of them was more obvious than the other—it would be more-or-less obvious to pursue any and all of them, in the absence of a firm reason not to. Other sub-tests used in the UK include the ‘ob-via’—‘lying in the road’—test, and the ‘workshop variations’ approach (see below). The court will also be interested in whether there is a ‘lion in the path’; a perceived problem that would deter the skilled person from taking the path the inventor took to arrive at the invention. The approach of examining whether a patent makes a plausible technical contribution, derived from the EPO authority of AgrEvo (see above), has also been applied in the UK by the House of Lords37. In practice, the court will take a multi-factorial approach depending on the evidence before it: The question of obviousness must be considered on the facts of each case. The court must consider the weight to be attached to any particular factor in the light of all the relevant circumstances. These may include such matters as the motive to find a solution to the problem the patent addresses, the number and extent of the possible avenues of research, the effort involved in pursuing them and the expectation of success.38 Furthermore, secondary evidence on matters such as long-felt want and commercial success is admissible in the UK, but it will be of limited value by comparison with the primary evidence. Criticism of problem-and-solution As noted above, the national courts have been mindful of a number of limitations to the EPO’s problem-and-solution approach. These were summarized by Jacob LJ in Actavis UK Limited v Novartis, as follows.39 The hindsight problem The single closet prior art document rule in the problem-and-solution approach can establish an artificial ‘objective technical problem’, which the inventor may never have understood from the prior art in the same way, or have even been aware of. Much therefore depends on how the objective technical problem is derived. The particular risk is that by defining an objective technical problem, the solution is inferred. This is a hindsight risk, as the Guidelines for Examination in the EPO acknowledge and warn against:40 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 on inventive activity (T 229/85, OJ 6/1987, 237). It is, as discussed above, a problem that has also been identified at a national level. The hindsight problem is exemplified by the ‘Anywayup Cup’ case discussed in the next section. Perceiving that there is a problem It has also been suggested that the problem-and-solution approach does not cope well with cases where the invention involves perceiving that there is a problem in the first place, or in appreciating that a known problem, perhaps ‘put up with’ for a long time, can be solved. An example of this is the ‘Anywayup Cup’ case.41 Babies’ drinker cups had been known for years, as was the fact that a cup leaked if dropped. This was without anyone thinking to solve the problem. The patentee had the technically trivial idea of fitting such cups with a known kind of valve to prevent them leaking. This invention was held in the UK to be non-obvious. However, it has been doubted that the invention would be held non-obvious using the problem-and-solution approach, because by identifying the objective technical problem as leakage and suggesting it can be solved, the answer is already half suggested: put in a valve. In other words, once the really inventive part (the problem) has been identified for step 2 of the problem-and-solution approach, the ‘invention’ in step 3 inevitably looks obvious. The 5¼-inch plate paradox A further potential weakness of problem-and-solution that has been suggested is its unsuitability for patents of the type illustrated by the 5¼-inch plate paradox.42 This concerns a hypothetical patent claim for a plate of diameter 5¼ inches. No-one can find a plate of that particular diameter in the prior art. Does this mean (a) it is novel; and (b) it is non-obvious, because there is no particular reason to choose that diameter? The conclusion that the plate is patentable is too absurd to be correct. However, the problem-and-solution analysis cannot assist in coming to this conclusion, because there is no problem and therefore no solution.43 Criticism of motivational tests It has also been explained that obvious-to-try, as an approach focused on the motivations of the skilled person, has limitations:44 On its face, this produces an unworkable or irrational test. If the reward for finding a solution to a problem and securing a monopoly for that solution is very high, then it may well be worthwhile for large players to examine all potential avenues to see if one gives the right result, even though the prospects of any one of them succeeding are much less than 50/50. What makes something worth trying is the outcome of a simple risk to reward calculation. Yet, if the reward is very large, the avenues worth trying will be expanded accordingly. So, the more commercially attractive the solution and the more pressing the public clamour for it, the harder it will be to avoid an obviousness attack. In those circumstances a solution which is quite low down a list of alternatives, all of which are more or less worth trying, will fail for obviousness; … The more the potential reward and the public demand, the more the motivation and the more likely the invention is to be obvious. The traditional obvious-to-try analysis is rooted in a lower-tech age rather than one in which technology is increasingly intensive:45 During the last forty years the volume of high-tech research has increased enormously, especially in the fields of pharmaceuticals and biotechnology. The resources committed to research are enormous, because the potential rewards in world-wide markets are so great. Competition is fierce. In this climate ‘obvious to try’ has tended to take on a life of its own as an important weapon in the armoury of those challenging the validity of a patent. The risk is that, in the present age, the obvious-to-try test may become a tool favouring patent revocation. This is not only a concern for the UK obvious-to-try approach, but also for the EPO could/would analysis and any system that examines the motivations of the skilled person. An alternative basis for assessing inventive step The ‘workshop variations’ approach It has been observed that the doctrine of obviousness is intended to ensure that the public is not prevented from doing anything which is merely an obvious extension or workshop variation of what is already known at the priority date.46 If the patentee has come up with a solution to a problem which is no more than an obvious extension or workshop variation to the prior art, they cannot have a monopoly for that solution; whether or not the skilled man would be likely to have known of the prior art in question. The notional addressee is likely to want to use materials readily at hand to make essentially the same thing as is disclosed in the prior art. That is sufficient motivation and the use of those materials is, accordingly, obvious. Third parties are entitled to use any ‘natural extension’ or ‘obvious variant’ of the patentee’s concept if they are the type of workshop modification or alternative discussed above.47 An example of what is meant by ‘workshop variation’ is found in the case of Windsurfing International Inc v Tabur Marine (Great Britain) Ltd.48 The Windsurfing example The invention at issue in Windsurfing was a windsurfing board. Amongst the prior art cited against the patent, was the use by Peter Chilvers, a 12 year old, of his own home-made sailboard, which he sailed along an inlet at Hayling Island on summer weekends during two consecutive years. Based on a description of the Chilvers board, the Court of Appeal had to consider one point of difference: the Chilvers board had used a straight and ‘primitive’ split-boom, whereas the patented invention disclosed arcuate booms. In order to determine whether an arcuate boom was obvious over a split-boom the court examined the policy behind the invention requirement:49 … it would be wrong to prevent a man from doing something which is merely an obvious extension of what he has been doing or of what was known in the art before the priority date of the patent granted. The Court of Appeal asked itself upon what ground the substitution of a wishbone boom for a primitive, split-boom could be said to be not obvious. Only, it thought, on the ground that the hypothetical skilled man would have been so uninterested in this child’s plaything that he would not have applied his mind to the matter at all. On the evidence, the court thought it clear that any skilled adult who applied his mind to Chilvers’ device would at once have seen it as obvious that the unconventional and primitive split boom devised by Chilvers ought to be replaced by the conventional wishbone boom. The wishbone boom, even though not in everyday use, would then have been familiar to anyone skilled in yachtbuilding. In particular, issues of obvious substitution were at the forefront of the court’s reasoning: anybody with a reasonable degree of sailing knowledge looking at the Chilvers sailboard must have at once seen that the perfectly well known device of a wishbone boom would be a substitute—a workshop variation—for the primitive split boom actually employed. An answer to the 5¼-inch plate problem According to the workshop variations approach, trivial limitations, such as specifying a plate diameter for no technical reason are treated as obvious because if it is known to make a 5-inch plate then making a 5¼-inch plate is a purely arbitrary and non-technical workshop modification. Workshop variations in the EPO The example of Genentech/Expression in Yeast50 demonstrates how a similar approach to workshop variations has been used in the context of a problem-and-solution analysis. Genentech concerned the construction of alternative yeast expression vectors suitable for expressing in yeast any exogenous gene of choice. The TBA commented that, in acting on the disclosure in the prior art, the skilled person ‘within the known design procedures’ would readily seek appropriate, manifest changes, modifications or adjustments which involve little trouble or work and no risks or only calculable risks, especially for the sake of obtaining a more handy or convenient product or simplifying a procedure.51 Common ground and the UPC What common ground is there between the approaches to determining inventive step/obviousness in the national courts of Europe, and how should these be applied by the future UPC? The courts of a number of countries allow evidence to be adduced on secondary considerations, in order to assist the court on the issue of inventive step—such evidence includes long-felt want, commercial success, prejudice against the invention at the priority date, the elapse of time in which a problem is not solved, etc. The weight given to such evidence will differ. However, the primary question in any assessment of inventive step is that posed in Article 56 EPC: is the invention obvious to a person skilled in the art? The EPO, French, German, Dutch and UK courts all provide structured approaches to this question, although they do not answer the question itself: in France, the UK and Germany, this question is asked as the final step of the structured approach. In order to answer the obviousness question the courts share the method of examining the motivations of the skilled person to make the invention at the priority date. In the EPO and the Netherlands, it is the question of whether the skilled person would (not could) arrive at the solution to the technical objective problem on the basis of the closest prior art. The motivation of a reasonable expectation of success is relevant to this. Similarly, in France it is asked whether a skilled person who is willing to solve the problem would solve it in the way described by the patent. In Germany, motivation is apparent in its three-step test: would the average person skilled in the art have cause to direct his or her thinking in the direction of the invention and what are the factors for and against them doing so? In the UK, the skilled person’s motivation is examined when it is asked whether it was obvious to try the invention with a fair expectation of success. However, the UK and Germany are arguably more open to including other factors that the skilled person would consider, such as elements in the prior art that teach away from the invention and prejudices of mindset. As has so often be remarked in all of these countries, however, motivational questions are only applicable where the person skilled in the art has a particular problem in mind that they want to solve. This is because the motivation must be the solution of some recognized problem or meet some recognized need52—one cannot be motivated to solve a problem they do not know they have. Tests relying on an examination of the skilled person’s motivations for success have also been criticized for tending towards findings of obviousness in the contemporary environment, where research and development is intensive and the pressure to find solutions is high. There are alternative ways of addressing inventive step, which focus on the nature of the technical contribution of a patent. In appropriate case, the concept of invention can be viewed as encompassing variants sharing functional characteristics—an approach familiar from scope of protection of claim assessments.53 This analysis lends itself to a workshop variation approach which is not based on the identification of an objective technical problem or the motivation of the skilled person, but instead uses technical properties to identify whether variant claimed invention is essentially a substitute or extension of the prior art. The technical contribution of an invention is also the subject of the AgrEvo/John Hopkins plausibility test, which asks whether there is a plausible technical contribution at all. If there is not, then there cannot be an invention. It is applied in the EPO and Netherlands and has also featured in the UK. It can be seen from the above discussion that the future UPC has open to it a range of approaches to determining the statutory question on inventive step: ‘is the invention obvious?’. These are based on the motivations of the skilled person, plausibility and the substance of the technical advances claimed by the invention. There is, however, no one-size-fits-all approach and nor should there be. That means the UPC should not limit itself to the problem-and-solution analysis or motivation tests. Instead, the UPC should assess obviousness with flexibility, using all the appropriate factors discussed, according to the particular facts of the case. Footnotes 1 Paul England, ‘The Scope of Protection of Patent Claims’, Journal of Intellectual Property Law & Practice, 2016, Vol. 11, No. 9. 2 Guidelines for Examination in the EPO, Part G, Patentability, Chapter VII-2, 5, November 2015. 3 Guidelines for Examination in the EPO, Part G, Patentability, Chapter VII-8, 6, November 2015. 4 Ibid, Chapter VII-3, 5.2, November 2015; and see T 606/89. 5 For example, see T 641/00. 6 Guidelines for Examination in the EPO, Part G, Patentability, Chapter VII-5, 5.3, November 2015. 7 See, for example, T 2/83. 8 Case Law of the Boards of Appeal (7th edition), September 2013, p. 184. 9 T 2/83. 10 T 149/93. 11 See also T 187/93, which states that even if it was obvious for the skilled person to try an experiment, they would not necessarily have any reasonable expectation of success when embarking on it. 12 Guidelines for Examination in the EPO, Part G, Chapter VII-12, 10.2, November 2015. 13 Ibid, Chapter VII-11, 10.2, November 2015. 14 T 0939/92. 15 (T 1329/04) [2006] EPOR 8. 16 Sté EFSA v Gérard CECCHI, Cour d’Appel, Paris, 14 April 1995, PIBD 1995, III, 320. 17 Cour d’Appel, Paris, SAS Sandoz v Eli Lilly and Company, 13 January 2012, Case no. 10/17727. 18 Tribunal de Grande Instance, Paris, Hutchison/Gomma Barre Thomas, 10 March 2009. 19 BGH GRUR 2009, 382—Olanzapine. 20 BGH, Stoβwellen—Lithotripter, XZR 115/96. 21 Pagenberg, ‘Beweisanzeichen auf dem Prüfstand – Für eine objective Prüfung auf erfinderische Tägigkeit’, GRUR Int. 1986, 83 ff. 22 BGH, Ziehmaschinenzugeinheit II, X ZR 49/09, 29 June 2010. 23 See Hoge Raad, Rockwool/Isover, 15 February 2008 and the Court of Appeal, The Hague, Novogen Research/Care for Women, 3 July 2008. 24 District Court of The Hague, Geotechnics/Meeuwissen, 15 April 2003. 25 Hoge Raad, Rockwool/Isover, 15 February 2008. 26 Ibid; see also District Court, The Hague, Van Diepen/Pronk, 2 July 2008. 27 District Court, The Hague, Bornemann/Houttuin, 2 July 2003. 28 Court of Appeal, The Hague, Tetra/Meyn, 30 September 1999. 29 Court of Appeal, The Hague, Warner-Lambert/Ranbaxy, 28 February 2008. 30 Reference should be made to the Case Law of the Boards of Appeal of the EPO, 7th edition, September 2013. 31 District Court, The Hague, 3M/Avery, 25 April 2007. 32 Section 3 implements Article 56 EPC in UK law. 33 Pozzoli SPA v BDMO SA [2007] FSR 37, at para 23. 34 PLG Research Limited & Anor v Arnold International Limited & Ors [1995] FSR 116. 35 Conor Medsystems Incorporated v Angiotech Pharmaceuticals Incorporated and others [2008] UKHL 49, at para 48. 36 Brugger and others v Medic-Aid Ltd [1996] RPC 635, at 661. 37 Conor Medsystems Inc v Angiotech Pharma. Inc [2008] UKHL 49. 38 Per Kitchin J, Generics (UK) Limited & Ors v H. Lundbeck A/S [2007] EWHC 1040 (Pat), para. 74. 39 See Jacob LJ in Actavis UK Limited v Novartis AG [2010] EWCA Civ 82. 40 Guidelines to Examination in the EPO, Part G, Patentability, Chapter VII-3, 5.2, November 2014. 41 Haberman v Jackel International [1999] FSR 683. 42 See Jacob LJ in Actavis UK Limited v Novartis AG [2010] EWCA Civ 82. 43 Arguably, the EPO could deal with facts of this kind on the basis that a 5¼-inch plate is ‘within the known design procedures’ for plate making. See Genentech/Expression in Yeast T455/91 [1996] EPOR 85, as discussed later in this article. 44 Reflecting Sir Hugh Laddie’s comments in ‘Patents—What’s Invention Got to Do With It?’, in D. Vaver and L. Bently (eds), Intellectual Property in the New Millennium (Cambridge University Press, Cambridge, 2004), p. 93. 45 Lord Walker, Conor Medsystems Incorporated v Angiotech Pharmaceuticals Incorporated and others [2008] UKHL 49. 46 PLG Research Limited & Another v Ardon International Limited & Others [1995] FSR 116 at 136. 47 Explained by Laddie J in Hoechst v Celanese Corp v BP Chemicals Ltd [1997] FSR 547, at 573. 48 [1985] RPC 59. 49 Per Oliver LJ, ibid, at 77. 50 T455/91 [1996] EPOR 85. 51 The TBA limits the scope of ‘known design procedures’ to very minor changes, because the skilled person in the field would be aware that even small structural changes in a product (such as a vector, a protein and/or a DNA sequence), or in a procedure, can produce dramatic functional changes. 52 See Cornish & Llewelyn, Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights, 5th edition (Sweet & Maxwell, London, 2003), at para. 5-49 and the reference therein to Beecham’s (Amoxycillin) Application [1980] RPC 261, at 290. 53 England, ‘The Scope’. © The Author(s) 2018. Published by Oxford University Press. All rights reserved. This article is published and distributed under the terms of the Oxford University Press, Standard Journals Publication Model (https://academic.oup.com/journals/pages/about_us/legal/notices)

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Published: Jan 22, 2018

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