non-obviousness

Non-Obviousness

Mario FRANZOSI*

INTRODUCTION

Notwithstandmg its success, the system created by the European Patent Convention (EPc) is still confronted with a series of unresolved issues that do not allow it to become entirely rational. For instance, it is not clear yet in all Member States whether a granted European patent has to be considered a truly European title, governed by the European law as far as vahdity and scope of protection are concerned, or a national patent instead. Perhaps an indication of the uncertainty is not so much the fact that some courts have taken the first approach1 and others the second,2 but the fact that some courts have taken one approach to then shifi to the opposite.3

A major d~fficulty resides in the fact that there is not a clear understanding of the yardstick to measure inventive level (also called non-obviousness, or inventive step, or inventiveness) .4 The European Patent Office (EPo) constantly applies the principle outlined in AECI, in Decision5 T 1/81, that:

“ ... patents granted under the EPC should have inventive step sufficient to ensure to the patentees a fair degree of certainty that, if contested, the validity of the patent will be upheld by a national court. The standard should anyhow not be below what may be considered an average amongst the standards presently applied by the Contracting States.”

National courts seem to hold sometimes that the standard of the EPO is too low.6 This difficulty cannot be resolved in an institutionally recognizable manner, since a European court having jurisdiction in this matter does not exist.7 It is only the constant

* Attorney, Franzod, Dal Negro and Partners, Milan-Rome, Italy. Was formerly with the University of Parma, Italy; and now Visiting Lecturer at the University of Washington, Seattle, Washington, U.S.A.

The author may be contacted at: [email protected]*.

Rechtschutz und Urheberrecht Teil (GRuR), 1989, 496; IIC, 1990, 372. 1 See Fasern-Herstellungsueelfahren (Fibre production process), 3 Ni 40/87, 2 November 1988, Gewerblicher

2 To some extent, Tool Holder Spindles, Zurich Commercial Court, 3 December 1991, 1992 GRUR intemationaler Teil (GRUR Int.), 783. ’ Omanon/Chiron, Court ofAppeal ofThe Harme, 1 December 1994; and Boston/Cordis. 23 April 1999, Court of Appeaof The Hague, IER, 1998 170.

- 4 In the Italian terminology, s t i l l called sometimes creativity or originality or intrinsic novelty. 5 T 1/81, AEcr/Themoplastic Sockets, O.J. 1981, 439. 6 See J. Brinkhof, The Revocation ofEuropean Patents, IIC 225, 1996; J. Pagenberg, Dgerent Level oflnventiue Step

for German and European Patents? The Present Practice OfNullity Proceedings in Germany, 6 Irc 763, 1991. 7 Only recently a draft of a regulation for a European Court and for a Protocol connected to the European

Patent Convention has been prepared and discussed. See European Patent Litigation Protocol (EPLP), available at: cchttp://www.european-patent-office.org/news/pressre1/2~0~08~03~e.h~~~; and Commission of the European Community, Commission Working Document on the Planned Community Patentjurisdiction, Brussels, 30 August 2002.

234 THE JOURNAL OF WORLD INTELLECTUAL PROPERTY

adoption and acceptance of the yardstick by the EPO and the national courts8 that can make it controlling.9

For the determination of non-obviousness, the EPO applies what it calls the objective criterion based on the problem-and-solution approach. As outlined by Paterson,”-’ it consists of the following steps:

(a) With reference to the claimed invention to be assessed, the “closest prior art” is determined (for example, the prior document that comes closest to disclosing the invention).

(b) Starting from this closest prior art and the technical results or effect achieved thereby, and by comparison with the technical effect achieved by the claimed invention, the objective technical problem to be solved in progressing from the closest prior art to the claimed invention is determined.

The obviousness, or otherwise, of the proposed solution to this problem to a person skilled in the art, starting from the closest prior art, is assessed.’’

(c)

This article discusses the so-called “objective criterion” adopted by the EPO. Even if the criterion is not totally objective, it leads to less uncertain results than other criteria; but there is, perhaps, also room for improvement. A more detailed criterion is suggested herein, but for the examination of an application and for the evaluation of the inventive level of a granted patent.

I. THE CONCEPT OF INVENTION

The very concept of invention shows that an objective criterion (to establish in a single case whether there is a patentable invention) does not and cannot exist. If an objective criteria were adopted, it would not make a distinction on the basis of whether or not there was inventiveness but on other elements. Those elements may be akin to the concept of invention, but cannot coincide.

8 See Biogen v. Medeua, 1997, R.P.C. 1, where the House of Lords took pains to stress that they considered decisions of the Technical Board highly authoritative.

9 From a practical point of view, some help may be obtained Gom the exchange of views of judges; see U. Krieger, When Will the European Community Patent Finally Am’ve? 29 IIC 860, 1998.

lo G. Paterson, The European Patent System, Sweet and Maxwell, London, 1992, p. 424. The EPO publication called Care-Law ofthe Board ofAppeal ofthe European Patent Office, 3rd edition, 1998, p. 110, mentions four steps, namely: (a) identify the “closest prior art”; (b) assess the technical results (or effects) achieved by the claimed invention when compared with the “closest prior art”; (c) define the technical problem to be solved as the object of the invention to achieve these results; and (d) examining whether or not a skilled person, having regard to the state of the art in the sense of Article 54(2), would have suggested the claimed technical feature for obtaining the results achieved by the claimed invention. See also EPO Guidelines, c-IV, 9.5.

Different was the c o m e of action followed by the English Courts, as outlined in Wzndsurfrng International v. Tabur Marine, 1985 R.P.C. 59, at 7 3 f., and reformulated in Molynlycke v. Procter and Gamble, 1994 R.P.C. 49: (i) What is the inventive step said to be involved in the patent in suit? (ii) What was, at the priority date, the state of the art (as statutory-defined) relevant to that step? (iii) In what respect does the step go beyond, or differ &om, the state of the art? (iv) Having regard to such development or difference, would the step be obvious to the skilled man?

NON-OBVIOUSNESS 235

Invention is the combining of separate ideas, whose connecting principle did not exist before.12

Nothing can be created anew (only Zeus could generate Athena, already perfect, from his brain). Human hands have to work on existing things, and human minds have to work on existing ideas. Existing things and existing ideas are modified (through association or combination: the words can be used here in any combination), to create new things or new ideas. Every inventor, every man or woman in his or her day-to-day operation, has to build on top of the patrimony of existing ideas and existing materials.

There are two procedures for combining existing ideas. The first, when a principle of combination exists; the second, when a principle of combination does not exist.

The first combination proceeds with a sort of syllogistic pattern:

- - -

A typical combination of this nature is the addition of two numbers that were never added together before. Such a combination would be new, but it would not be inventive. The reason is precisely because the principle of combination exists already. Potentially, if not actually, the combination is already in the possession of mankind. Every combination of (existing) ideas, no matter how difficult, is not inventive when the principle of combination existed before.

ideas belonging to group A and ideas belonging to group B can be combined, idea A’ belongs to group A; idea B’ belongs to group B, therefore ideas A’ and B’ can be combined.

The non-inventive combination is made with a faculty of the mind that is called reasoning, or logic, or inferential function. It creates association of ideas by deriving consequences from general principles.

The second combination is done in spite of a lack of guidance. Even if it were not known that idea A’ and idea B’ can be combined, the ideas are combined nevertheless. The mind does not see the procedure, but the result. It is, so to speak, struck with the insight of the final point, without being bothered by the procedure of the journey. It goes from the starting point to the target, without intermehate steps. It is comparable to what Bergson described as the charge of the cavalry, that does not measure every single yard, but falls upon the enemy with dash and bold “dun”.

This is the inventive combination. It is not done with reasoning, but with a different faculty of the mind, which can be called insight or intuition, or lateral thinking. It creates associations of ideas when general principles of combination do not exist. Therefore, “to invent” means to combine two (or more) ideas when the principle of combination does not exist, and can only be established by an act of insight.

12 Mario Franzosi, L’invenzione, Giuffk, Milan, 1970, at 111.


Even if inventions are not created by logic, they are not illogical. Once they have been created, the solution appears logical. The ideas that are combined are fit to be combined. Often, it seems that it would have not been logical to think differently. This is because even if a principle of combination did not exist before, it is the invention that establishes a principle of combination. And this newly established principle of combination shows the logical (we could now say “obvious”) derivation of the invention from previous knowledge. It is like a riddle or a puzzle: before the solution it was not clear how to solve it, but afterwards it is obvious.

The human mind cannot reject what it has received (it can only forget, but that only after some time). Once a principle of combination is fixed in the mind, there is no way to erase it. This means that when an invention is made, the difficulty is dissolved, and what was an invention appears as the obvious result of logic.13

A few principles can be expressed at this point:

- the only objective criterion to establish the presence of invention in indwidual cases would consist of findmg out whether the principle of combination existed before the invention;

when the invention is made, it normally becomes impossible to deny the existence of the principle of combination;

in any event, in order to ascertain whether an act of insight or an act of logic was required for establishing a specific combination of ideas, it is safer and more appropriate to examine the situation before the invention than after.

-

-

11. THE PROCEDURE FOR DETERMINATION OF AN INVENTION

It is appropriate here to recall once again the first proposition of Article 56 of the EPC:

“Inventive step: 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 following o u t h e , on the basis of the above discussion and on Article 56, is a proposal for a procedure to establish in individual cases the presence of a patentable invention. The ideal procedure would consist of more than the three or four steps

‘3 See Technograph Printed Circuit v. Mills and Ruckley, 1972 R.P.C. 346, where Diplock L.J. said: “Once an invention has been made it is generally possible to postulate a combination of steps by which the invcntor might have arrived at the invention that he claims in his specification ifhe started from something that was already known. But it is only because the invention has been made and has proved successful that it is possible to postulate from what starting point and by what particular combination of steps the inventor could have arrived at his invention. I t may be that taken in isolation none of the steps which it is now possible to postulate if taken in isolation appears to call for an inventive ingenuity. It is improbable that this reconstruction a posteriori represents the mental process by which the inventor in fact arrived at his invention but, even if it were, inventive ingenuity lay in perceiving that the final result which was the object of the inventor to achieve was attainable from the particular starting point and his selection of the particular combination of steps which would lead to that result.”

NON-OBVIOUSNESS 237

followed by the EPO (indicated above). Ideally, it should have ten steps. These are the following:

A. B. C. D. E. F. G. H. I. J.

Examination of the background of the invention. Identification of the closest prior art. Determination of the technical problem arising from the prior art. Identlfication of the person skilled in the art. Attribution to the expert of the common general knowledge. Attribution to the expert of the enhanced knowledge. Determination of the solution that the expert would find. Comparison of the expert’s solution with the invention. Chechng for obviousness. Application of the so-called “objective criteria” (or secondary indicia).

As will be shown, this is an ideal (i.e. theoretical) procedure, not a practical one. From a practical point of view, it would be too burdensome to use this criterion, unless and until we may have at our disposal an artificial intelligence that could do the evaluation quickly and dependably.

The criterion should work in the same manner, both for evaluating the patentability of an application during the examination, and the validity of a granted patent. The requirement for protection is the same for both. However, the criterion is more suitable for an examination of the validity of a granted examined patent, than for an evaluation during examination.

In any event, an exposition and examination of this ideal procedure may give useful hints for a practical procedure, and avoid errors, as are frequently made.

A. Examination of the Background .f the Invention

The first step is the examination of the background of the invention; when the patent is granted, after examination, this can be done by reading at that part of the patent which mentions the prior art and the problems that the prior art does not solve. This part is normally called “background of the invention”.14 Ths first step is less easily done when it concerns an application, unless the applicant has properly positioned his invention in the framework of the prior art.

The background of the invention should be objectively, and not subjectively, formulated. I t often happens that an invention is described by the applicant in relation with such prior art, which is known to him, while the existing relevant prior art may be dfferent. It may also happen that, after the grant, additional prior art is found which may change the background of the granted patent. In such instances the background of the invention as resulting from the application or the patent may not be entirely relevant,

14 EPO Guidelines, Part B, Chapten 111 3.14 and IV 2.7.


and the proper background should be objectively construed. The problem is similar to the one that will be encountered for the third step (determination of the problem).

The objective identification of the background of the invention cannot be made without knowing the invention. But this conflicts with the principle that when an invention is known it does not seem to be inventive, and thus there should be no background. An early comprehension of the invention allows a proper positioning of the technology in question, but tends to hang a cloud over the invention. In practice, however, the dificulty is not so substantial. In fact, in the case of a pending application, the background of the invention is identified by the Search Divisions of the Epo15 and the substantive examination is made by the Examining Division. Therefore, those who have to check the formulation of the background of the invention made by the applicant, and those who have to establish non-obviousness, are dfferent persons. In the case of a granted patent, the background of the invention is established by the EPO, and not by the person or body (judge who delivers a decision or attorney who delivers an opinion) that evaluates validity.

B. Identijication ofthe Closest Prior Art

The following step is the identification of the closest prior art. The current practice of the EPO is to consider only one piece of information, namely the one that is the closest.16 For example in Bayer, Decision T 68/83,’’ it was debated at length which of two prior documents was to be considered the closest. The composition of the compounds described and the field of application was not considered the decisive factor and, in the light of the problem sought for by the invention, a consideration of the properties was held to be controlling.

It would appear that &om a practical point ofview, and for the purposes ofwriting and examining a two-part c l a i m l k n e part of whch can be dwided into a pre-characterizing part, followed by the expression “characterized by the fact that”, and then followed by the characterizing part-the identification of one document as the most pertinent prior art is convenient. It wd then appear in the pre-characterizing part (Oberbegnf). However, it is not correct to limit the prior art against whch inventiveness has to be assessed to only one piece. In real life, an inventor possesses general and specific information, and all is used for proceedmg h-om the problem to the solution. Invention is the combination of existing ideas, but not necessarily of two ideas only (one can make an invention by combining the idea of a horse and an eagle to conceive a flying horse, but another can combine the ideas of eagle, lion and dragon to conceive the Etruscan Chimera). Very frequently a European

‘5 EPC, Articles 17 and 92. ‘6 EPO Guidelines, Part C , Chapter IV 9.5. Consideration of two documents was held exceptional in T 176/89,

17 Bayer/Thermoplastic Moulding Compositions, O.J. 84/357. 18 Or ‘yepson” as it is called in the United States: see Ex PurteJepson, 1917 C.D. 62, 243 O.G. 525 (Ass’t

Em Case-Law, at 112.

Comm’r Pat. 1917), cited in D. Chisum, Chisum on Patents, Vol. 3, at § 8.06(l)(c), 2000.

NON-OBVIOUSNESS 239

patent mentions, in the background of the invention, more than one prior art. Why should the closest prior art be limited to one piece?

In any case, the identification of one or more pieces of prior art does not make a fundamental difference, provided that the prior art which is not used for step B. is used later for steps E. and F.

C. Determination ofthe Technical Problem Arisingfrom the Prior Art

The t h r d step is the determination of the technical problem. It should be an objective problem w h c h takes into consideration the pertinent prior art, and not one which may be imperfectly identified by the inventor, perhaps o n the basis of an insufficient consideration of the prior art. It should also be a problem resulting from (or suggested by) the prior art (whether sufficiently or not), and not one suggested and solved (in a more exact way) by the invention.

In Speny, Decision T 13/84,19 it was stated:

“When the problem to be solved and its solution are formulated in relation to the prior art . . . the invention will appear in a perspective which (may) somehow (be) different from that presented in the application. Such a situation is, however, inherent to a patent-granting procedure in which a research made after filing may reveal prior art, which is nearer to the invention . . . A reformulation of the problem . . . may become necessary . . . It has been the constant jurisprudence of the Board of Appeal that the nature of the problem has to be determined on the basis of objective facts, in particular as appearing in the prior art revealed in the course of the proceedings, which may be different from the prior art of which the inventor was actually aware at the time the application was filed.”

In Giba Geigy, Decision T 1812/82,20 it was stated:

“Examination with regard to inventive step is limited to the question of obviousness in the overall light of the state of the art and from the viewpoint of the closest prior art (looking forward) and not from that of the invention (looking backward).”

And in Solway, Decision T 5/81,21 it was considered inadmissible that:

“ ... a posteriori analysis, i.e. an interpretation of the prior document as influenced by the problem solved by the invention, while the problem was neither mentioned or suggested (by the prior art not known to) the person skilled in the art.”

Finally, in Schmid, Decision T 229/85,22 it was said that the problem must be formulated:

“. . . [so] as not to contain pointers to the solution, since including part of a solution offered by an invention in the statement of the problem must . . . necessarily result in an ex postfacto view being taken of inventive activity.”

19 Sperry/Reformulation ofthe Problem, O.J. 1986, 253. 20 Ciba Geigy/Spiro Compounds, O.J. 1984,401. 21 Solway/Production of Hollow Thermoplastic Objects, O.J. 1982, 249. 22 Schmid/Ekhing Process, O.J. 1987,237.


D. Identification ofthe Person Skilled in the Art

The next step is the identification of the parameter that is used for the evaluation of non-obviousness. This parameter is called “the person slulled in the art”, o r “the notional addressee”, or “the average technician” or “the slulled technician”. Non- obviousness is evaluated on the basis of the experience, preparation and skill of this hypothetical person. In the Solway decision,23 it was said that the approach must not be too abstract:

“ ... [and] removed from the thinking of the person skilled in the art, which [is] oriented towards practicalities . . . The teaching of a document may have narrower implications for a person skilled in the art and broader implications for a potential inventor who first recognizes the problem on which his future invention is to be based. The assessment of inventive step must consider solely the limited teaching for the person skilled in the art.”

The qualification of the expert has to be construed realistically, in a manner close to actual practice:24

The nature of the expert can be derived from the preparation and technical education of the person acting in the particular field of activity.25 However:

“ ... if the problem prompts the person skilled in the art to seek the solution in another technical field, the specialist in that field is the person qualified to solve the problem. The assessment of whether the solution involves an inventive step must thereforc be based on that specialist’s knowledge and ability.”26

If an invention deals with two dlfferent technical fields, the technical abilities of the experts of both fields have to be considered.27 In the English case General Tire v. Firestone28 it was stated:

“If the art is one having a highly developed technology, the notional skilled reader to whom the document is addressed may not be a single person but a team, whose combined skill would normally be eniployed in that art in interpreting and carrying into effect instructions such as those which are contained in the document to be construed.”

Two English decisions are worth mentioning in this connection. In Beloit Technologies Inc. v. Vulmet Paper Machinery Inc.,29 Aldous L.J. said:

“It has never been easy to differentiate between common general knowledge and that which is known by some. It has become particularly difficult with the modern ability to circulate and retrieve information. Employees of some companies, with the use of libraries and patent departments will become aware of information soon after it is published in a whole variety of documents; whereas others, without such advantages, may never do so until that

23 Supra, footnote 21. 24 Eisai/Benzodioxane Denvates, T 334/92, 0.1. 1995, 38. 2s Borsenbugel, X ZR 60/75, IIC 1979, 254. 26 Fives-Cail BabcoUCleaning Apparatus for Conveyor Belt, T 32/81, 0.1. 1982, 225. In the same vein

*7 23 W 147/87,30 March 1989, BPatGe 30, 188. 28 1972 R.P.C. 457 (CA). See also Cenentech v. Wellcome, 1989 R.P.C. 147 (CA); T 95/88, 1991 EPOR 458;

2y 1997 R.P.C. 489.

Polymerisationsbeschleun~~y, ZR 152/63, 5 November 1964, PMZ 1965, 207.

Kin’n-Amgen/Erythropoietin, T 412/93, 1995 EPOR 629. See EPO Case-Law, p. 119.

NON-OBVIOUSNESS 24 1

information is accepted generally and put into practice. The notional skilled addressee is the original man who may not have the advantages that some employees of large companies may have . . . It follows that evidence that a fact is known or even well known to a witness does not establish that that fact forms part of the common general knowledge. Neither does it follow that it will form part of the common general knowledge if it is recorded in a document.”

In Valensi v. British Radio Corporation,30 Buckley L.J. said

“The hypothetical addressee is not a person of exceptional skill and knowledge, and he is not expected to exercise any invention or any prolonged research, inquiry or experiment. He must, however, be prepared to display a reasonable degree of skill and common knowledge of the art in making trials and to correct obvious errors in the specification if a means of correcting them can be easily found.”

And in American decisions,31 six elements are considered

- - -

- sophistication of the technology; - -

In Standard Oi l C o . v. American Cyanamid C O . , ~ ~ it was said:

of conventional wisdom in the art and is not one who undertakes to innovate.”

type of problem encountered in art; prior art solution to those problems; rapidity with which innovations are made;

educational level of the inventor; and educational level of active workers in the field.

“. . . a person of ordinary skill in the art is also presumed to be one who thinks along the lines

E. Attribution to the Expert Ofthe C o m m o n General Knowledge

The next step is the attribution to the expert of the common general knowledge.33

The words of Sachs L.J., in General Tire and Rubber C o . v. Firestone Tire and Rubber Co. Ltd.34 are worth repeating here:

“The common general knowledge imputed (to the skilled technician) must of course be carefully distinguished from what in patent law is regarded as public knowledge .._ Common general knowledge is a different concept derived from a common-sense approach to the practical question of what would in fact be known to an appropriately skilled addressee-the sort of man, good at his job, that could be found in real life. The two classes of documents which call for consideration in relation to common general knowledge . . . (are) individual patent specifications and widely read publications. As to the former, it is clear that indvidual patent specifications and their content do not normally form part of the relevant common general knowledge, though there may be specifications which are so well

30 1973 R.P.C. 337 (CA). 31 Custom Accessories v. Jeffy-Allan Industries, 807 F. 2d 955, 1 U.S.P.Q. 2d 1196 (Fed. Cir. 1986);

32 774 F. 2d 448, 227 U.S.P.Q. 293, at 297 (Fed. Cir. 1985). 33 Mario Franzosi, Novelty and Non-Obviousness--?7le Relevant Prior Art, 3 J.W.I.P. 5, September 2000, p. 683;

34 1972 R.P.C. 457.

Environmental Design v. Union Oil Co. ofcal., 713 F. 2d 693 (Fed. Cir. 1983) cert. denied 464 U.S. 1043 (1984).

idem, Novita’ e non owieta’, Riv. Dir. Ind., 2000, I, at 63.


known amongst those versed in the art that upon evidence of that state of affiirs they form part of such knowledge, and also there may occasionally be particular industries . . . in which the evidence may show that all specifications form part of the relevant knowledge.

As regards scientific papers generally, it was said by Luxmoore J., in British Acoustic Film u. Nettiefold Productions, 1936 R.P.C. 221: ‘a piece of particular knowledge as disclosed in a scientific paper does not become common general knowledge merely because it is widely read, and still less because it is widely circulated, (but) when it is generally known and accepted without question by the bulk of those who are engaged in the particular art; in other words, when it becomes part of their common stock of knowledge relating to the art.’

We accept these passages as correctly stating in general the law on this point, though reserving for further consideration whether the words ‘accepted without question’ not be putting the position rather high ... we are disposed to substitute the words ‘generally regarded’ as a good basis for further action . . .”.

F. Attribution to the Expert ofthe Enhanced Knowledge

After having attributed to the expert the common general knowledge, other knowledge has to be attributed to the hypothetical expert, namely the enhanced (or imputed) knowledge. This argument also has been the subject of some of this author’s articles, some passages of which35 are pertinent here.

“The second group of prior art (which is relevant to assess non-obviousness) is the enhanced knowledge that the good expert would necessarily acquire when confronted with a new problem. This includes all textbooks (old and new), even if of not frequent consultation, patent literature and articles in the current technical literature.

I think it would be reasonable to assume that a good expert should consult and have access to all published patent literature ofthe three major patent systems, namely the United States, Europe (European Patent Office) and Japan, which represent 95 percent of all patent literature (important national patents also follow the US. and/or European and/or Japanese route), as well as the patent literature of the most industrialized countries, and also of non- industrialized countries which are specialized for the technology in question. In a decision of the European Technical Board [T 1/81, AEcr/Thennoplastic Sockets, O.J. 1981, p. 4393 it was held that ‘the expert must be presumed to study patent publications in the relevant patent classes with particular interest.’ I think it would also be reasonable to assume that the expert should consult general technical publications and, for specific technologes, specific technical publications consulted in the specific field of endeavor.”

However, not all the enhanced knowledge has to be taken into consideration for the assessment of non-obviousness:

“For the evaluation of non-obviousness the expert has all the enhanced knowledge at his disposal. But he has no reason to make use of all, and only uses what he considers pertinent. Perhaps the easiest explanation can be given with reference to the known alternative between ‘could’ and ‘would’.”36

35 Franzosi, Novita’ e non owieta’, supra, footnote 33, at 65 and 71. 36 See G.S.A. Szabo, The Problem and Solution Approach in the European Pafent OfFce, IIC, 1995, p. 457, at pp. 475

e f seq.

NON-OBVIOUSNESS 243

Regard has “to be given to whether a skilled person would have arrived at the claimed solution to a problem (as compared to whether he could have done ~0).”37

In T 2/83 (Rider), it was stated:

“. . . the proper question to be asked was not whether the skilled man could have provided (a certain feature), but whether he would have done so in expectation of some improvement or advantage.”3*

And in Allied Cobalt, Decision T 265/84:

“While the skilled person could have found by mere chance or extensive research and testing . . . variants in the area (of his endeavour), he had no good reason to move in such direction . . . in the absence of any expectation of improvement. The assumption must therefore be that he would not have done so in the circumstances . . .”.39

The question, as the Enghsh Court of Appeal in Norton Healthcure said:

“. . . may depend upon whether it was obvious to try in the circumstances of that particular case and in those circumstances it will be necessary to take into account the expectations of achieving a good re~ult.”~O

G. Determination ofthe Solution that the Expert Would Find

The next step is the determination of the solution that the expert would find. The judge or interpreter should wear the mantel of the skilled expert, with the common general knowledge and the enhanced (or imputed) knowledge, and identifjr the obvious solution to the problem that said pieces of information suggest. This can be called solution A. He or she should proceed, of course, with no knowledge of the invention, and also without inventive activity. Only plain rule of logic has to be applied. As said in an American case, Litton Systems:

“Resolution of this issue entails a difficult process of turning back the clock to a time when the invention was made and asking what someone of ordinary skill in the art may have thought.’I4l

In Discovision v. Disctronics, Pumfrey J. stated:

“Once an invention has been made it is generally possible to postulate a combination of steps by which the inventor might have arrived at the invention that he claims in his specification if he started from something that was already known. But it is only because the invention has been made.. . that it is possible to postulate from what starting point and by what particular combination of steps the inventor could have arrived at his

37 Paterson, supra, footnote 10, p. 444. The most pertinent EPO decisions are T 2/83 and T 265/84, T 219187,

38 Rider/Simeticone Tablet, O.J. 1984, p. 265. 39 Allied Cobalt FoiL, 1987 E.P.O.R. 193. 40 Norton Healthcare Lrd. u. Beecham Group pfc, 19 June 1997. 4’ Litton Systems, I tu . v. Honeywefi, Inc., 87 F. 3d 1559, 39 U.S.P.Q. 2d 1321 (Fed. Cir. 1996). 42 29July 1998. See also supra, footnote 13.

T 203/93, T 713/93, T 223/94, T 455/94 and T 280/95.


And in Siddell v. Vickers t? Sons Ltd.,43 Herschell L.J. said:

“Experience has shown that not a few inventions have been of so simple a character that once they have been made known it was difficult ... not to believe that they must have been obvious to everybody.”

H. Comparison of the Expert’s Solution with the Invention

The next step is the comparison between the solution that the expert could find (solution A) and the invention covered by the patent (patented solution). Solution A may be identical with, similar to, or different from the solution covered by the patent.

Should the solution be identified there is no invention. The solutions are similar but not identical when they are expressed in different form but may be considered technically equivalent. The yardstick to be used for assessing technical equivalency is the same as that applicable to establish novelty.44

Solutions different from the invention, but that can be immediately understood by the expert-on the basis of common general knowledge and imputed knowledge and without need for research or consideration-as being equivalent (ie. unsubstantial variations) are to be considered identical. Here the expert does not look at a photographic identity between the solution given in the patent and the one found as above (i.e. between the patented solution and solution A), but accepts and applies a variation of the patented solution on the basis of said common and enhanced knowledge.

I. Checking for Obviousness

If the solutions are technically different, it can be concluded that the technical solution covered by the patent possesses an inventive level, i.e. it is non-obvious. Since the solution that the expert would find is to be considered obvious, and also a technically similar solution would be considered obvious, a technically different solution could not be considered obvious. This follows from the principle of identity:

- if the solution (A) available to the expert (as discussed in Section H. above) is identical to the alleged invention claimed in the patent (patented solution), or is substantially identical:

then the alleged invention (patented solution) is not an invention;

and therefore a different solution is an invention.

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(Patented solution = Solution A is not an invention; Patented solution # Solution A is an invention.)

43 1987 R.P.C. 292, at 304. 44 Franzosi, Novifa’e now owieta’, supra, footnote 33, at 65 and 75.

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It remains to be seen whether a patented solution which is not technically similar to the one reached by the expert, as discussed in Section G. above, but which is nevertheless different from a non-inventive aspect, can be considered an invention.45

A dstinction must be made here between technical solutions which are different in both a horizontal and a vertical manner. A horizontally hfferent solution is different fiom the solution that the expert could find, but not so much from the prior art. It is simply another possible technical solution that the expert could find-perhaps more or less simple, perhaps more or less burdensome. The expert could find solution A, but he can also find solution A’. Therefore A’ is not inventive-even it is not the first solution that the expert could have found-because it is nevertheless a solution that the expert could find. A vertically different solution is different from the solution that the expert would find, and also from the prior art. It may be a simple solution starting from the solution that the expert could find, but not starting from the prior art. Starting from the prior art the expert could find solution A, starting fiom Solution A, but not from the prior art, he could find solution A’. Solution A’ may be non-inventive with respect to A, but inventive with respect to the prior art. Its non-obviousness cannot be denied. A different conclusion would lead to a possible denial of the inventive level of all contributions, since it is always possible to demonstrate, once the invention is made, that the result can be arrived at with a series, short or long, of non-inventive passages. A technical solution, which is technically different from the solution that the expert could (obviously) find, and is also distant from the prior art, is necessarily an invention. The said solution should not be examined further to check how much is technically different from the solution that the expert could find.

J. Application ofthe So-called “Objective Criteria” (or Secondary Indicia)

The above-mentioned analysis cannot be substituted by the application of the so- called “objective criteria”. However, these criteria can be applied to verify a conclusion already reached, or reach a conclusion in case of doubt. They should not be sufficient per se to resolve the evaluation of non-obviousness.

45 This problem should not be confused with, or be considered akin to, the one evidenced by the Formstein decision of 1986 (General Federal Supreme Court, 29 April 1986, 18 IIC 795, 1987) examined also in Wilson Sporting Goods (904 F. 2d 677, 14 U.S.P.Q. 2d 1942, Fed. Cir. 1990, cert. denied, 498 U.S. 992, 1990) and anticipated by Gillem (1913, 30 R.P.C. 465, at 480). The Fomtein defence, or defence ofthe free state of the art, implies that he who reproduces the prior art, or a technical solution which is not inventively different from the prior art, is not an infringer. The defence of the free state of the art is possible when the technical solution under scrutiny is simdar (i.e. not different in an inventive manner) from the common general knowledge and the enhanced knowledge. But said exception should not be applicable when the technical solution under scrutiny is different from the solution that can be reached by the expert on the basis of the common general knowledge and the enhanced knowledge. The exception is possible if the solution under scrutiny is non-inventively different from the knowledge mentioned under Sections E and F, but not G.


Pagenberg, in an article in the IIC, in 1978,46 lists nineteen criteria that may assist in the determination of an inventive level. These criteria relate to factors which are based on facts taken from the world at large, and not from the examination of single inventions. His analysis is still applicable. These criteria are:

- Commercial success: The rational for this criterion is that the purchaser is to be considered as an objective judge who spends money only for valuable contributions to the state of the art.47

Overcoming dtjiculties: The time during which the barrier of the prior art existed allows an objective measurement of the importance of the technical contribution.

Satisfaction of a long-existant need Considering that the need for technological improvement is generally regarded as the main impulse of technical advance, a need which has existed for a long time may indicate that no one was able to remove the difficulties and solve the problem.48

Failure and unsuccessful attempts of experts: Attempts are undertaken if a need exists and experts are not able to find a solution.49

Increased performance, greater productivity: The industry would have introduced the better solution in order to beat competition if it had been aware of the solution.

Cheaper and more economical production: The industry would have reduced the manufacturing process and costs, if it had been aware of the solution.

Simplijcation of machines, construction, manufacturing methods, etc.: Modification of complicated machines and production lines or processes by more simple devices has always been a most convincing manifestation of inventive skill.

Technical progress, advance in the art: Technical progress in general is regarded as one of the inherent goals of the patent system, either in the form of the discovery of a better solution (Fortschritt) or addition of a new technical solution (Bereicherung der Technik).

Pioneer inventions: Creation of totally new industries or branches of industry, which did not exist before the invention, is particularly significant.

Disbeliefand scepticism of experts: If the experts in the field consider the solution

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46 The Evaluation offhe Inventive Step in the European Patent System-More Objective Standards Needed, Vol. 9, Irc 1 and 121 (1978). See also Note, Subtests ofl\ion-O6viousness: A Non-Technical Approach to Patent Validity, 112 U.Pa. L. Rev. 1169, 1964.

47 Graham v. John Deere Co., 383 U.S. 1, 17, 1966. 48 Ibid., at 16; Minnesota Mining and Manufacturing Co. v.Johnson &Johnson Orrhopaedics, 976 F. 2d 1559 (Fed.

49 Graham, supra, footnote 47, at 17. Cir. 1992).

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found by the inventor with scepticism but nevertheless the said solution meets success, it is generally non-obvious.50

New and unexpected results: If the invention is not simdar to references available in the literature or art, this could be a symptom of non-obviousness.51

Licence rights acquiredjom the inventor: The granting of licences on the patent shows the commercial success and, therefore, the real need for the invention.

Copying or infn'ngement ofthe invention by competitors: If a competitor takes the risk of the expense of an infiingement suit, it could mean that he is convinced that he will have financial benefits from the invention52

Circumvention: If a competitor tries to develop a substitute for an invention (but remains within the scope of protection), it means that he believes in the invention.

Professional recognition, laudatory comments ofothers working in the art: All forms of professional recognition (i.e. articles in scientific journals and/or speeches) can be relevant indicia of valid1ty.53

Costly and long-luting research and deveiopment: If the inventor spent a significant amount of money and time, it could mean that the solution finally reached is not obvious.

Taking into account ofthegrantingproceeding, parallel applications abroad and previous patent litigation: The fact that the granting proceeding of the patent or the existence of the patent meets a lot of opposition is an indication that technical experts have confirmed its importance.

Long-existant prior art: If some elements relevant for the invention have been available for a long period in a different field of technology, but were not used, it means that their combination is not obvious.

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- Special choice among a multitude ofpossible solutions: If the inventor, at the start of his research, disposes of a multitude of possible solutions and he finally finds the only one which really works, the solution may be non-obvious.

Secondary considerations only merit attention when a nexus between the invention and the objective criteria can be established. For instance, commercial success may come about for reasons completely unrelated to the invention, and attributable to the patentee's marketing capabdity. A careful analysis of objective criteria, and in

so United States v. A d a m , 383 U.S. 39 (1946). 5' Lindemann Maschinenfabrik GmbH v. American Hoist and Denidz Co., 730 F. 2d 1452 (Fed. Cir. 1984). s2 Ashland Oil, Inc. v. Delta Resins and Refi(ltones, 776 F. 2d 281 (Fed. Cir. 1985) cert. den, 475 U.S. 1017

53 Interconnect Planning COT. v. Feil, 774 F. 2d 1132 (Fed. Cir. 1985). (1986).


particular of commercial success has been done by Laddie J. in Haberman v.]ackel Znt., and is attached as an Annex to this article.

CONCLUSION

As said earlier, and in conclusion, this course of action is more of a logical guideline than a practical one. To ascertain in this manner the presence of an invention would require substantial efforts, if not of the same level, at least almost comparable to the ones made to succeed in the invention. This course of action is the closest to the legal paradigm, and should be taken into consideration even if it is not applied, so as to avoid the most severe and primitive mistakes.

Annex Habeman v. Jackel Int., 1999 F.S.R. 683: Comments by Laddie J,

“In all cases where obviousness is an issue the court is trying to look back to what paths would have been seriously considered by a notional skilled (but uninventive) person in the relevant art at the priority date. The task is made more difficult because the patentee’s development is already known to the parties and the court. Therefore inevitably the court will know not only that a solution is possible but what it is. Many patented inventions operate in accordance with simple principles of physics, chemistry or other sciences. It is normally easy to understand why they work. From this it is but a short step to thinking that a competent technician in the art would have realized, starting from the same simple principles, why the solution proposed by the patentee should have worked. So, worlung from those principles, the solution must be obvious. In such cases it is also easy to take the relevant expert witnesses under cross-examination through a series of logical steps which lead to the solution. The simpler the solution, the easier it is to explain. The easier it is to explain, the more obvious it can appear. This is not always Lir to inventors.

If skilled workers in the art had looked at the priority date both at the prior art relied on and had turned their minds to solving a known problem their reactions would come closer to showing what would have been the approach of the hypothetical skilled man. Unfortunately evidence in that form rarely exists. However some insight into the thinking of those in the art at the priority date can be provided by evidence of commercial success. To this end patentees sometimes prove schedules of sales to support their claims to inventiveness. In most cases this type of evidence is of little or no value because it does no more than show that a particular item or process which employs the patented development, has sold well. The mere existence of large sales says nothing about what problems were being tackled by those in the art nor, without more, does it demonstrate that success in the market

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place has anything to do with the patented development nor whether it was or was not the obvious thing to do. After all, it is sometimes possible to make large profits by sehng well an obvious product. But in some circumstances commercial success can throw light on the approach and thought processes which pervade the industry as a whole. The plaintiffs rely on commercial success here. To be of value in helping to determine whether a development is obvious or not it seems to me that the following matten are relevant:

What was the problem which the patented development addressed. Although sometimes a development may be the obvious solution to another problem, that is not fiequently the case.

How long had that problem existed.

How significant was the problem seen to be. A problem which was viewed in the trade as trivial might not have generated much in the way of efforts to find a solution. So an extended period during which no solution was proposed (or proposed as a Commercial proposition) would throw little light on whether, technically, it was obvious. Such an extended period ofinactivity may demonstrate no more than that those in the trade did not believe that finding a solution was commercially worth the effort. The fact, if it be one, that they had miscalculated the commercial benefits to be achieved by the solution says little about its technical obviousness and it is only the latter which counts. On the other hand evidence which suggests that those in the art were aware of the problem and had been trying to find a solution will assist the patentee.

How widely known was the problem and how many were likely to be seeking a solution. Where the problem was widely known to many in the relevant art, the greater the prospect of it being solved quickly.

What prior art would have been likely to be known to all or most of those who would have been expected to be involved in finding a solution. A development may be obvious over a piece of esoteric prior art of which most in the trade would have been ignorant. If that is so, commercial success over other, less relevant, prior art will have much reduced significance.

What other solutions were put forward in the period leading up to the publication of the patentee’s development. This overlaps with other factors. For example it illustrates that others in the art were aware of the problem and were seeking a solution. But it also is of relevance in that it may indicate that the patentee’s development was not what would have occurred to the relevant workers. This factor must be treated with care. As has been said on more than one occasion, there may be more than one obvious route round a technical problem. The existence of alternatives does not prevent each of them fkom being obvious. O n the other hand where the patentee’s development would have been expected to be at the forekont of solutions to be found yet it was not and other, more expensive or complex or less satisfactory, solutions were employed instead, then this may suggest that the ex post facto assessment that the solution was at the forefront of possibilities is wrong.

To what extent were there factors which would have held hack the exploitation of the solution even if it was technically obvious. For example it may be that the materials or equipment necessary to exploit the solution were only available belatedly or their cost was so high as to act as a commercial deterrent. On the other hand ifthe necessary materials and apparatus were readily available at reasonable cost, a lengthy period during which the solution was not proposed is a factor which is consistent with lack of obviousness.

How well has the patentee’s development been received. Once the product or process was put into commercial operation, to what extent was it a commercial success. In lookmg at this. it is leitimate to have regard not only to the success indicated bv exeloitation bv the


patentee and his licencees but also to the commercial success achieved by infringers. Furthermore the number of infringers may reflect on some of the other bctors set out above. For example if there are a large number of infringers it may be some indication of the number of members of the trade who were likely to be looking for alternative or improved products (see (iv) above).

To what extent can it be shown that the whole or much of tile commercial success is due to the technical merits of the development, i.e. because it solves the problem. Success which is largely attributable to other factors, such as the commercial power of the patentee or his licensee, extensive advertising focusing on features which have nothing to do with the development, branding or other technical features of the product or process, says nothing about the value of the invention.

I do not suggest that this is exhaustive. But it does represent factors which taken together may

After analysing the evidence he came to his conclusion:

“I have not found the decision on validity in this case easy. [The Defendants] arguments on obviousness are powerful. At times I could not see how this could be anything but obvious. But in the end I have not been persuaded. [The Plaintiff] has taken a very small and simple step but it appears to me to be a step which any one of the many people in this trade could have taken at any time over at least the preceding ten years or more. In view of the obvious benefits which would flow &om it, I have come to the conclusion that had it really been obvious to those in the art it would have been found by other earlier, and probably much earlier. It was there under their very noses. As it was it fell to a comparative outsider to see it. It is not obvious. This finding can be expressed in the language used by Hoffmann L.J. as he was in STEP v. Emson (I19931 RPC 513). M n Haberman’s patent discloses something sufficiently inventive to deserve the grant of a monopoly.

One problem that we do not face is any ddference of approach, at least amongst the English Judges. There is also considerable reluctance on the part of the Court of Appeal to interfere with a finding as to obviousness, almost as matter of principal, as was made clear in Bourns v. Raychem (unreported 17.12.98) by Aldous L.J., who observed that: ‘In any case, I would have been slow to come to a different conclusion when the question of obviousness is, as has often been said, a jury-type question.’ ”

(i)

point towards or away from inventiveness. Most of them have been addressed in this case.”

non-obviousness

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