- My article "The modern problem-solution approach" was published in epi Information 2/2021.
- It's the article I basically wanted to write since qualifying as a European patent attorney in 2015. I hope readers find it a useful addition to the literature. I give a step-by-step description of the PSA as it is frequently applied in daily practice (with 13 small steps instead of the 3 large steps mentioned in the Guidelines). Somewhat surprisingly this practical form of the PSA can be found nowhere in the legal handbooks (e.g. Visser, Singer/Stauder, Benkard EPU), the Guidelines and the Case Law book tough step-by-step instructions for the PSA can be found in the EQE course books.
- I personally find the Guidelines chapter about inventive step quite confusing, but that is something for another article or blogpost.
- The advantage of publishing in epi Information is that it is open access on the internet while at the same time having a carefully maintained archive and stable website ensuring long term availability.
22 July 2021
Summertime reading - The modern problem-solution approach
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You have to watch out for using the mechanism used by the C committee as determining the necessary steps in a PSA. For instance, document 2 needing some motivation to apply its teaching, is an extra indication that inventive step is lacking. It is not a prerequisite for inventive step to be lavking, though patent proprietors frequently take this position and examiners may fall for this. In my opinion, the wish to solve the problem is already frequently enough motivation to apply a teaching if the skilled person recognises that this teaching solves the problem.
ReplyDeleteThe C committee wants to make sure there is sufficient information in the paper so that a candidate can hardly make a mistake...
Thank you, Peter, for writing the Paper and putting it up for publication. For me it is sad that EPO-PSA, even after 40 years, is still not recognised for what it is, a supremely fair structure for the debate about obviousness which, given debaters who understand EPO-PSA, will speedily and efficiently get to a result which neither side can legitimately complain about.
ReplyDeleteI think it is a tragedy that the patent judges of the world's most prominent patent litigation jurisdictions can't bring themselves to adopt it in full. If they were to do so, far fewer patent nullity suits would go all the way to full trial, for the outcome would be clearer for the parties in dispute, at an earlier stage of the dispute.
There is something called the "Not Invented Here Syndrome" well-known to deter R&D teams from following ideas suggested from outside. How much more impossible is it, for judges in courts to recognise as the best available an approach developed by mere administrators inside a mere Patent Office.
Just as an example, consider today's piece on obviousness in the Patently-O blog. All about something they call "teaching away". Away from what, you might well ask. Here a Link:
https://patentlyo.com/patent/2021/07/obviousness-teaching-alternative.html#comment-623366
Indeed, the issue is even if D2 discloses the distinguishing feature, whether " the skilled person recognises that this teaching solves the problem". In real life cases, the recognition could come from common general knowledge, the teaching of D2, or some other document, but especially if c.g.k. is invoked there risk that the opponent makes the assertion based on hindsight.
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