Inventive Step In The USA, The UK and in Europe.

"... and in every age there come forth things that are new and have no foretelling, for they do not proceed from the past."1

Introduction

What is an invention? We need to know, or we have no basis for discerning invention in any set of facts placed before us. But the EPC does not define "invention" in any its 178 Articles, the reason being that the contracting states were unable to agree on such a definition2. Our colleagues in other jurisdictions are under a similar handicap. Fortunately the EPO Appeal Boards have filled the gap. They have devised a test for inventive step that is easy to apply, gives consistent and widely accepted results, and is arguably better than any comparable test used anywhere else in the World.

With hindsight it is not surprising that this should have happened. When the EPO was established the members of the Boards of Appeal were drawn from senior practitioners from all the contracting states, and the jurisprudence of the Appeal Boards has resulted from a fusion of their national traditions and ideas.

The EPO approach to problem/solution analysis which as will be explained below is effect-based is not identical to the Germanic approach which involved (a) ascertaining the problem to be solved, (b) selecting the technical principle to be applied, and (c) selecting particular means to solve the problem, unobviousness in any of the above stages supporting inventive step3. Problem/solution analysis was an ingredient of German law, just as it could be found in U.K. law but this author has been unable to find evidence that it was so dominant a test for determining patentability as it is under the EPC. There were other important concepts of German law that have not been expressly carried forward into the EPC or the jurisprudence of the EPO Appeal Boards, such as erfindungshoche and technical advance. About the time when the EPO opened, the contemporary writings of our German colleagues do not show a sustained effort directed at convincing practitioners in the UK and that problem/solution analysis should be made into the dominant feature of the test for inventive step to be applied by the EPO. Instead they were drawing attention to the disappearing German concept of technical advance4. The author recalls from discussions with George Szabo who was one of the founder members of the EPO Appeal Boards that the technical problem test evolved immediately after the EPO was established as a result of intensive discussions and studies carried out by the newly appointed members of the Appeal Boards in preparation for the expected flow of appeal cases, that they were determined to take advantage of the best features of all their national traditions, and that it is misleading to ascribe the features of the EPO approach to the traditions of any one country.

Is it positive or negative characteristics that matter?

The EPC, like the UK Patents Act 1949 and like 35 USC bolts together concepts of inventiveness and obviousness that are not synonymous. Art. 52(1) EPC requires an invention to involve an inventive step. Article 56 explains that an invention should be considered as involving an inventive step if it is not obvious to a person skilled in the art. But if "inventive step" makes no significant addition to the Convention, why did not Art. 52(1) simply specify un-obviousness as its third criterion?

"Invention" comes from the Latin verb invenire meaning to find or to come upon. On that basis, the Convention requires an invention to have the positive attribute of an underlying discovery by the inventor. That requirement fits the structure of patent claims, which specify a set of integers, relationships between the integers and a function or result that flows from providing those integers and establishing those relationships. The new function or result, if unexpected, provides the required positive attribute and can be identified with the invenium or finding upon which the concept of "invention" is based. That formulation is consistent with the expectations of most scientists and engineers who it is submitted expect a patentee to have achieved something positive before he can apply for a patent. It is also consistent with the views of those who drafted the US Constitution, who were working in the common law tradition and in the light of some 160 years experience since the passing of the Statute of Monopolies5. They included in the Constitution a provision authorizing Congress "To promote the progress of useful arts by securing for limited times to inventors the exclusive right to their discoveries."

Before the introduction of obviousness as a statutory requirement into UK6 and US7 law, the courts focused on the requirement of inventiveness, and older UK and US decisions should be read with this in mind. For example, in the U.K. the courts held that a scintilla of invention was needed to support the subject matter of a claim8. In the USA, the Supreme Court held that patentability required the involvement of more ingenuity than the work of a mechanic skilled in the art9 and in 1941 controversially went on to say that an invention should reveal the flash of creative genius10. On this formulation, the skilled person implicitly has a degree of creative power. In the European view the skilled man does not display ingenuity, is cautious in modifying or adjusting a known product or process but would make appropriate changes that appeared to be easy and to involve no obvious risks11. Laddie J. has further described him in his decision in Pfizer v Lilly Icos12 in the following memorable passage:

"The question of obviousness has to be assessed through the eyes of the skilled but non-inventive man in the art. This is not a real person. He is a legal creation. He is supposed to offer an objective test of whether a particular development can be protected by a patent. He is deemed to have looked at and read publicly available documents and to know of public uses in the prior art. He understands all languages and dialects. He never misses the obvious nor stumbles on the inventive. He has no private idiosyncratic preferences or dislikes. He never thinks laterally. He differs from all real people in one or more of these characteristics. A real worker in the field may never look at a piece of prior art for example he may never look at the contents of a particular public library or he may be put off because it is in a language he does not know. But the notional addressee is taken to have done so. This is a reflection of part of the policy underlying the law of obviousness. Anything which is obvious over what is available to the public cannot subsequently be the subject of valid patent protection even if, in practice, few would have bothered looking through the prior art or would have found the particular items relied on. Patents are not granted for the discovery and wider dissemination of public material and what is obvious over it, but only for making new inventions. A worker who finds, is given or stumbles upon any piece of public prior art must realize that that art and anything obvious over it cannot be monopolized by him and he is reassured that it cannot be monopolized by anyone else."

Obviousness come comes from the Latin ob+via, meaning by the wayside13. So the emphasis is not on discovery but on accessibility, and what is being looked for is a negative attribute i.e. that the skilled person would have come upon the claimed subject matter sooner or later and without having to display ingenuity. When introduced into statute law, an obviousness test tends become substituted for an enquiry into inventive character. Indeed, Judge Giles S. Rich argued that the introduction of obviousness standard into US law removed any separate requirement for inventive character, which he described as a rough-hewn stopgap with which the courts had filled in a void in the patent law, but which had now been replaced by a carefully worked-out statutory substitute of non-obviousness14.

Unfortunately life is not that simple. Many things are not obvious in the sense of readily accessible but do not involve ingenuity. A familiar example is the set of winning numbers for the next draw in the National Lottery. It is not difficult and mildly entertaining to devise groupings of familiar objects that would be difficult to trace collectively to the prior art15 but which do not achieve any unexpected effect or solve any technical problem. It is arguable that the point raised by Judge Rich had already been answered by the US Supreme Court in Graham v John Deere16 where it was held that the requirement for invention or patentable novelty had existed in US law since at least 1850, and that the new law had merely codified existing judicial precedents and introduced an enquiry as to the obviousness of the subject matter claimed as a prerequisite to patentability. In other words, to be patentable an invention must have patentable novelty and be free from objection on the ground of obviousness. Essentially the same point arose before the EPO Appeal Board17 where applicants argued that the significant question in relation to the obviousness of a claimed class of compounds was whether it was obvious to prepare any compound within the class, and not whether all the compounds within the class solved a technical problem. The Appeal Board rejected this argument on the basis that the extent of the patent monopoly should correspond to and be justified by the technical contribution to the art: it follows that there must be a positive technical contribution to justify a patent. Both discovery and accessibility can be important and both of them are habitually considered by the EPO and by national courts under the heading of "obviousness". One of the problems that we often face is to identify which of them is likely to be crucial in a case that we are currently handling.

The "scales of justice" approach

Do we need a test that is more sophisticated than the express provisions of the Convention? A litigation lawyer might say, following the approach of Judge Rich: "Why not rely on the statute? Inventiveness and obviousness are questions of fact. The parties should file their evidence in the usual way, and in courts working within the Common Law system that evidence can be tested by cross-examination. Then the Judge can weigh up the evidence and come to his decision." The common law tradition has until recently exhibited remarkable resistance to the development of a systematic test for inventive step. Anyone who has worked day-to-day with UK judges, barristers and solicitors knows that they are very able and could easily have evolved such a test, but that they were united in the view that it was undesirable to do so. White and Warden18 have defended the pragmatic British tradition on the ground of flexibility and said:

"For administrative convenience, inventiveness may come to be judged by some philosophical meter-stick and not by a pragmatic approach based on a full consideration of all the facts. This can only lead to the patent system becoming more divorced from reality."

The action between Graham and John Deere19 concerning infringement of US patent 2627798 provides an example of a court reaching its decision straightforwardly on the basis of the evidence adduced20. The invention concerned an improved clamp for clamping a long springy chisel-carrier to the frame of a plough. The patentees alleged that the patented construction enabled the chisel-carrier to flex over more of its length, and that this difference, though small, made the difference between success and failure. The patentees had an uphill battle because an explanation of the importance of improved flexing had neither found its way into the specification of their patent nor been mentioned while the application was being prosecuted before the Patent Office. But what turned difficulty into defeat was that their expert witness would not confirm that improved flexing was important as the following extract from his cross-examination demonstrates21:

"Q. Do you regard this small degree of flex in the forward end of the shank that lies between the pivot point and the point of spring attachment to be of any significance or any importance to the functioning of a device such as 798?

A. Unless you are approaching the elastic limit, I think this flexing will reduce the maximum stress at the point of pivot there, where the maximum stress does occur. I think it will reduce that. I don't know how much.

Q. Do you think it is a substantial factor, a factor of importance in the functioning of the structure?

A. Not a great factor, no."

Unsurprisingly the Supreme Court believed the testimony of the patentee's expert, and held that the patent was unenforceable.

The importance in US or UK infringement proceedings of having witnesses who are aware of the implications of what they are saying and are on their guard against making incautious remarks cannot be over-emphasized: this is not to say that a witness should be partisan or frame his answers to technical questions in the light of what he or she imagines to be the legal implications of the answer, which will simply result in him being disbelieved22. Witnesses at European oral proceedings often give similar self-destructive testimony. Many of us in European opposition proceedings have had the experience of encountering the opposing representative unexpectedly accompanied by the inventor or by another technical person, and then having to judge whether to object to his giving evidence on the ground that it has not been notified in advance or to permit the accompanying person to have his say, taking the view that he is as likely through inexperience to say things that damage his case as he is to say things that improve it.However, both in the UK and in the USA, the courts have found through experience that it is not enough simply to listen to the witnesses and weigh their evidence. They have identified the need for a structured framework within which they can consider the evidence adduced. That put forward in Graham v John Deere23 now provides the leading approach under US law and involves the following steps:

Determining the scope and content of the prior art.

Ascertaining the differences between the prior art and the claims at issue.

Resolving the level of ordinary skill in the pertinent art.

Against this background, determining the obviousness or nonobviousness of the subject matter claimed.

Evaluating secondary considerations that provide indicia of obviousness or nonobviousness, such as commercial success, long-felt but unresolved needs, failure of others, etc. that can be used to give light to the circumstances surrounding the origin of the subject matter sought to be protected.

The framework suggested by the Court of Appeal in Windsurfer v Tabur Marine24 is of comparable status in the UK and is strikingly similar to the US test. It involves the following steps:

Identifying the inventive concept embodied in the patent in suit.

Assuming the mantle of the normally skilled but unimaginative addressee in the art at the priority date and imputing to him what was, at that date, common general knowledge in the art in question.

Identifying what, if any, differences exist between the matter cited as being "known or used" and the alleged invention.

Asking whether, viewed without any knowledge of the alleged invention, those differences constitute steps which would have been obvious to the skilled person or whether they require any degree of invention.

Both frameworks are intended to guide us in our approach towards a decision; when the time comes to make the decision we are left weighing the evidence as before. Depending upon our point of view this can be regarded as a beneficial means of preserving flexibility or as a failure to provide guidance where it is most needed. But as working patent attorneys or examiners we have time measured in hours to analyze a situation and make a recommendation that, if there is litigation, will be called on to survive the scrutiny of teams of litigators and experts whose time is measured in hundreds or possibly thousands of hours. We should therefore remind ourselves from time to time that our professional work is very difficult, and that it is foolish to ignore any tool than makes our task simpler or the outcome more reliable. A test that can be applied in an algorithmic manner such as that decided on by the EPO and that provides a consistent approach to the task of decision-making has clear advantages over an approach that involves having to decide anew for each case what is the appropriate legal framework before an analysis of the factual matrix can be undertaken.

Collocations and combinations

If we accept the view that new function or result is the invenium or discovery that justifies grant of a patent, then arguably that provides the scintilla that was called for in Parkes v Crocker25 and that was alluded to by the US Supreme Court in Cuno v Automatic Devices26, a requirement for a new function or result providing a more realistic and objective standard than a requirement for a flash of creative genius whilst nevertheless following the same general line of thought. Imposing a requirement of this kind amounts to the adoption of an "effect-based" approach27 and could in principle provide a useful and objective test that would command widespread acceptance.

The rule against collocations is an early formulation of an effect-based algorithmically applicable approach. It prohibits patenting a claim to a combination of known integers unless there is an unexpected new function or result that flows from the combination itself. The rule is potentially of wide application since, as Markey J., who was then chief judge of the US Court of Appeals for the Federal Circuit, memorably said: "Only God works from nothing. Man must work with old elements."28 To a reader steeped in recent case law, the frequency with which UK and US judges used to rely on the rule comes as a surprise.

An early statement of the rule by the US Supreme Court appears in Pickering v McCulloch29 as follows:

"In a patentable combination of old elements, all the constituents must so enter into it so that each qualifies every other; to draw an illustration from another branch of the law, they must be joint tenants of the domain of the invention, seized of every part per my et per tout, and not mere tenants in common with separate interests and estates. It must form either a new machine of a distinct character and function or produce a result due to the joint and cooperating action of all the elements, and which is not the mere adding together of the separate contributions. Otherwise it is only a mechanical juxtaposition and not a vital union."

By 1938, the rule had become so familiar that it was enough for the US Supreme Court to say, as it did in Lincoln Engineering Co v Stuart Warner Corp30:

"The mere aggregation of a number of old elements which, in the aggregation, produce no new or different function or operation than that theretofore performed or produced by them is not patentable invention."

The UK courts applied the same rule since the decision in Crane v Price31, and Lord Tomlin stated it the House of Lords in British Celanese v Courtaulds32 as follows:

"It is accepted as sound law that the mere placing side-by-side of old integers so that each performs its own proper function independently of any of the others is not a patentable combination, but where the old integers when placed together have some working relation producing a new or improved result, then there is patentable subject matter in the working relationship brought about by the collocation of the integers."

The steep decline in popularity that the rule has undergone in the UK since 1936 is a further surprise given its practical value when appropriately applied. It is even more surprising to come upon a paper written in 1943 by a U.K. Patent Agent33 advocating the adoption of a collocations test on the basis of US jurisprudence, and as if the test had been unknown to UK law whereas it had been restated by the House of Lords only a few years previously and in the early years of the twentieth century had been applied by Fletcher-Moulton L.J. whose reputation amongst UK patent lawyers has always been high. The article was not influential, and the decline continued so that in High Court infringement and revocation proceedings other tests are preferred and the collocations rule is almost never invoked. One possible explanation is that the collocations rule tests for the positive character of a discovery in or arising from the claimed subject matter, whereas the statutory obviousness standard that had been introduced in 1932 focuses on the negative characteristic of prior accessibility to the skilled person. Another explanation could be simply a change in fashionable viewpoint.

In the US, the rule against collocations had been falling into disrepute even before 1952 in the light of controversial opinions of the US Supreme Court in Funk Bros. Seed Co. v Kalo Inoculant Co.34 and infamously in Great A. & P. Tea Co v Supermarket Corp35. Nevertheless US Supreme Court continued to apply the rule after 1952 in its decisions in Anderson's-Black Rock Inc. v Pavement Savage Co36 and in Sakraida v AG Pro, Inc37. In Sakriaida, as in an number of previous cases, the court stripped away successive features from the claim, traced them to the prior art and found that they did not make a synergistic contribution, whilst acknowledging that overall the invention was better than the prior art and had been commercially successful. This approach is not calculated to inspire confidence amongst practitioners. Elevation of the requirement for new function or result into a requirement for synergism gave rise to a tidal wave of disapproval from both judges and academic writers. The Court of Appeals for the Federal Circuit responded by pointing out in Stratoflex Inc. v Aeroquip Corp.38 that a requirement for synergism is nowhere found in 35 USC, that its absence has no place in evaluating evidence concerning obviousness and that the allegedly more objective approach in Graham was derived from the language of the statute and was fully adequate for the task. Since that time the collocation test has also been in steep decline in the USA.

Both in the UK and in the USA, therefore, attempts to create an effect-based test using the prohibition on collocations failed because of legislative changes and because of disapproval on the part of practitioners, that disapproval flowing from inappropriate application of the test by the courts.

Under the EPC, the Appeal Boards have distinguished mere aggregations of features from combination inventions, and have been prepared to divide a technical problem into two or more independent partial problems. However, cases of this type have occurred only in insignificant numbers compared to those which have been dealt with by the more usual route of problem/solution analysis.

The EPO Approach

The concept of inventive step as explained in the successive decisions of the Boards of Appeal of the EPO provides a framework for solving disputes concerning obviousness, but it has also become fundamental to the resolution of other issues within the EPO, for example unity of invention, support in the description for claimed subject matter, and whether a particular description is enabling. It has two principal features:

Analysis is carried out within the formal framework of the problem and solution approach.

The analysis is effect-based.

Problem and solution analysis

Problem and solution analysis determines the citations that an examiner is likely to select when he puts forward an objection as to lack of inventive step, and the arguments that are most advantageously put forward in response to that objection. As those who study EPO Appeal Board decisions rapidly realize, EPO staff, from individual examiners to appeal board members are trained to ask themselves the following five questions:

What is the field of the invention?

What is the most relevant prior art in that field?

Starting from that prior art, what was the technical problem to be solved?

Was it inventive to identify the technical problem? If not: -

Was it inventive to find the particular solution provided by the claimed subject matter?

The scope of the claimed technical field is fundamental to problem/solution analysis because the starting point or primary reference that is used to formulate the technical problem is normally a document or instance of prior use within the claimed field. The applicant or patentee has the option to decide whether to claim the invention within a broad or narrow technical field and correspondingly to increase or decrease the range of citations which are potentially relevant. That proposition is supported by the following extract from the decision in T 570/9139:

"If ... a person skilled in the art prefers and decides to start from a specific compressor piston, he can further develop that piston but at the end of that development the normal result will still be a compressor piston and not an [internal combustion engine] piston. In other words, the chosen closest prior art must be able or at least potentially able, perhaps after modifications, to obtain the same effects as those resulting from the claimed embodiment... Otherwise, such starting point prior art could not lead a skilled person in an obvious way to the claimed invention."

It should be noted that the restriction must appear in or be introduced by amendment into the claims, and a mere statement in the description will not suffice.

The natural approach of an examiner or opponent is to base his objection on the structurally closest prior art, but that may not be a fair starting point if the reference that he has selected does not also associate the disclosed structure with properties that are relevant to the technical problem. There is therefore scope for argument that the primary reference should be a different document from that selected by the Examiner, and for basing the preamble or classifying part of a two-part claim on what is disclosed in that other document. To make such an argument work, we need to rely on a specific document or perhaps on a specific instance of prior use and not on a mere abstract generalization.

In T 0570/9140, the Board suggested the following basis for selecting the starting point disclosure:

"It seems that in most cases it is appropriate to look particularly at those prior art disclosures which have something to do, be it explicitly or implicitly, with the problem set out in the application or opposed patent. These disclosures will normally either be capable of being further developed to arrive at the claimed invention or at least point thereto. The closest prior art, i.e. that which provides the strongest basis for an obviousness objection, will then be selected from the above-mentioned disclosures."

A slightly different statement of the principles for selecting a starting point disclosure is found in the following extract from the opinion in T 0073/9541:

"During the oral proceedings, the Appellant ... argued that D1 required the minimum of structural and functional modifications and should, therefore, be regarded as the closest state of the art. The Board cannot follow that reasoning. The normal practice of the problem and solution approach requires, first, to consider whether a given teaching is directed to the same purpose or effect as the invention, and only subsequently to examine the compositional differences. It is sufficient to refer to the Case Law of the Boards of Appeal of the European Patent Office, Third Edition 1988, page 111 (English Version; chapter D. Inventive step, 3.1 Determination of closest prior art - general), where numerous decisions are quoted which all specify that a document cannot qualify as the closest prior art merely because of similarity in the composition of the products, but that a prerequisite therefor is that its suitability for the desired purpose has also been described."

In order for the EPO to acknowledge the existence of an inventive step, the definition of a technical problem is mandatory; see ICI/Containers42 where Appeal Board said:

"The provisions of Rule 27(1)(d) require that the description shall disclose how the invention can be understood as the solution to a technical problem. Indeed, the inventive step may be considered as a step from the technical problem to its solution. If, therefore, the requirements of the above rule are neither satisfied by the original description, nor, after request, by an amendment, it will emerge that an invention within the meaning of Article 52 does no

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