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INVENTIVE STEP IN EUROPE
“raising the bar”
Koen BijvankEuropean and Dutch patent attorney
Raising the bar: which one?
Is the inventive step criterion in Europe harmonized?
The landscape- The EPO approach during examination and
opposition proceedings- The approach of the national courts after
grantThe trendsHow would raising the bar in the EPO affect national court proceedings?
Inventive step in Europe
Article 56 EPC:
An invention shall be considered as involving an inventive step if, havingregard to the state of the art, it is notobvious to a person skilled in the art.
The criterion is clear, its application far from it.
The European Patent Office
The problem-solution approach
1. determining the “closest prior art”2. establishing the “objective technical
problem”to be solved3. considering whether or not the claimed
invention, starting from the closest prior art and the technical problem, wouldhave been obvious to the skilled personGuidelines for Examination in the European Patent Office C-IV, 11.7
The closest prior art
Most promising starting pointShould be directed to a similar purpose oreffect as the inventionShould be from the same technical field as the inventionRequires the minimum of structural and functional modifications to arrive at the invention
The objective technical problem
Determine the distinguishing features of the invention over the closest prior artIdentify the aim and task of modifying oradapting the closest prior art to provide the technical effects that the invention provides over the closest prior art
Has the problem been solved across the entire scope?
Is it obvious?
Combining prior art documents‘Could’ versus ‘would’Obvious to try: reasonable expectation of succesWho is the skilled person?No (or hardly) room for ‘squeeze arguments’
United Kingdom: the litigation system
Infringement and validity in the same proceedingsA specialized courtDiscoveryCross-examination
Inventive step in the United Kingdom
Formal approach different from the problem-solution approachFocus on common general knowledgeExperts are crucial‘Squeeze arguments’ often used
Inventive step in the United KingdomWindsurfing v Tabur Marine (1985)
modified in Pozzoli v BDMO & Anor (2007)
1. Identify (a) the notional “person skilled in the art”and (b) his common general knowledge
2. Identify the inventive concept, or construe it 3. Identify the differences between the “state of the
art” and the inventive concept 4. Viewed without any knowledge of the invention,
do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?
Germany: the litigation system
Separate proceedings for validity and infringementA specialized court dealing with validityFocus on written submissionsNo discovery or cross-examination
Inventive step in Germany
No formal approachThe formulation of the problem is based on- the specification- prior art mentioned in the specification- common general knowledge
Invention sometimes compared to combination of documentsNo (or hardly) room for ‘squeeze arguments’Experts play a relatively minor role
The Netherlands: the litigation system
Infringement and validity in the same proceedingsA specialized courtFocus on written submissionsNo discovery or cross-examination
Inventive step in The Netherlands
Usually the problem-solution approach is appliedArguments often focus on:
- Selection of the closest prior art- Motivation to combine- Reasonable expectation of success- Unexpected results
Room for ‘squeeze arguments’Experts can be decisive
The trends
Are the national courts lowering the bar?
Conor Medsystems vs AngiotechEli Lilly: olanzapineLundbeck: escitalopramLeo Pharma: calcipotriol
Possible effects of raising the bar at the EPO on national proceedings
Will national case law follow the EPO?Less patents, less litigation?Stronger patents, more determinations of infringement?Stronger patents, more confident patentees, more litigation?
Thank you!
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