Could or should the USPTO adopt the EPO problem-and-solution approach for assessing obviousness?

By Brian Cronin
January 12, 2017

The European Patent Organisation is an intergovernmental organisation that was set up on 7 October 1977 on the basis of the European Patent Convention (EPC) signed in Munich in 1973.

The European Patent Organization is an intergovernmental organization established on October 7, 1977, with authority of the European Patent Convention (EPC).

In the US, obviousness is governed by 35 USC §103 and the practice has developed as a function of Case Law. This article – which is a follow-up to The quest for patent quality: European inventive step and US obviousnessdiscusses whether the US Law on obviousness is compatible with the EPO problem-and-solution approach and whether the USPTO could and should adopt a comparable approach for objectively assessing inventive step. To start, I summarize the European perspective, then compare with the US.

The EPO problem-and-solution approach was developed as an objective way of systematically assessing inventive step for novel inventions in all areas of technology.

Rule 42(1)(c)EPC and PCT Rule 5.1(a)(iii) specify that the invention as claimed must be disclosed in such terms that the technical problem, even if not expressly stated as such, and its solution can be understood. This implies the axiom that all inventions – in particular patentable ones – can be expressed in terms of a solution to a technical problem. Expressing the inventive contribution in terms of a solution to a problem is a way of explaining how the skilled person proceeds from the prior art to the invention and constitutes a way of assessing inventive step. Based on early decisions of its Boards of Appeal, the EPO developed the problem-and-solution approach as a methodology for the assessment of the presence or the absence of inventive step in an objective and predictable manner. The structured approach is attributed to G. Szabo who was a member of a Board of Appeal.

Here is a commented summary extracted from the EPO Guidelines for Examination G-VII-5 which states that when assessing inventive step the problem-and-solution approach should be applied, and any deviation from that approach should be exceptional. This is an instruction to examiners that extends also to practitioners.

The problem-and-solution approach has three main steps:

(i) Determining the closest prior art,

(ii) Establishing the objective technical problem to be solved, and

(iii) Considering whether the claimed invention, starting from the closest prior art and the objective technical problem, would or would not have been obvious to the skilled person.

The critical first step is the determination of the closest prior art, which in principle is a single reference that is directed to a similar purpose or effect as the invention, that discloses a combination of features which constitutes the most promising starting point for a development leading to the invention, and that requires the minimum of structural and functional modifications to arrive at the claimed invention. This first step is crucial from the perspective of the EPO’s maxim of procedural economy, as the Office wants to make only one assessment of inventive step to come to a definitive decision. Choice of the closest prior art is sometimes straightforward, sometimes disputed.

The second step – formulation of the objective technical problem – takes place in three stages:

  • Identifying the features that distinguish the claimed invention over the closest prior art,
  • Identifying the technical effect (if any) resulting from the distinguishing features, and
  • Formulating the technical problem solved.

In the context of the problem-and-solution approach, the technical problem means the aim and task of modifying or adapting the closest prior art to provide the technical effects that the invention provides over the closest prior art. The technical problem thus defined is referred to as the objective technical problem. Though the « objective » problem can be expressed in different ways, and could be regarded as somewhat subjective, the term « objective » was adopted to indicate that the problem is objectively based on the closest prior art and the latest version of the claim, as viewed by the notional skilled person. It is thus distinguished over the subjective problem the inventor may have been faced with on the basis of more remote prior art.

This objective technical problem must be carefully formulated, and in particular:

  • May require reformulation as the facts change. Gearing down the problem to a lesser effect is common and allows flexibility in applying the approach.
  • Must not contain any pointer to the claimed solution, as this would result in an ex post facto view of inventive activity. By the correct application of this principle, inadmissible hindsight can be eliminated.
  • Does not imply that the invention must be an improvement to the prior art. In its simplest formulation, the problem could be to provide an alternative to a known device or process.
  • Can be expressed as a plurality of partial problems that are each considered separately, if the distinguishing features in combination provide no overall technical effect.
  • Should rely only on features that contribute to the technical character of an invention.

The third and last step of the problem-and-solution approach addresses whether or not the solution was obvious to a notional skilled person. It is not considered necessary to ascertain the skilled person’s level of skill as this is assumed to be self-adjusting according to the field of each invention. Different types of argumentation can be used. The EPO favors a « could-would » approach which runs along these lines: the point is not whether the skilled person could have arrived at the invention by adapting or modifying the closest prior art, but whether he would have done so because the prior art incited him to do so in the hope of solving the objective technical problem or in expectation of an improvement or advantage, thereby arriving at something falling within the scope of the claims, and achieving what the invention achieves.

Whether or not the invention involves an inventive step should emerge from this third step in a flip-flop manner. This is a powerful tool for identifying equally the presence or the absence of an inventive step as it focalizes attention on the essential parameters. Details of Case Law precedent can be worked into arguments. Fuller details of how the EPO apply this approach are given in the Guidelines G-VII-5.

The problem-and-solution approach is tailored for the EPO because thousands of examiners assess the inventiveness of hundreds of thousands of patent applications, so a uniform and universally-applicable approach is needed. It could be a useful tool for Judges but is not intended for them. Courts typically handle relatively few cases they deal with following their own procedures, notably rules on evidence.

I now turn to the question of whether the US law and practice on obviousness is compatible with the described problem-and-solution approach.

The idea that inventions are regarded as solutions to problems is well anchored in US practice. Ronald D. Slusky’s book “Invention Analysis and Claiming: A Patent Lawyer’s Guide” has as central theme the importance of using the problem-solution paradigm to identify the inventive concept before claim drafting begins. In the drafting context, problem-solution is used as a flexible tool. As such it is a precursor to the EPO problem-and-solution approach that is limited to the assessment of inventive step of novel inventions at the decision-taking stage, once the claim has been settled.

Problems and solutions are also mentioned in US Supreme Court decisions. For example  KSR vs Teleflex mentions « one of the ways in which a patent’s subject matter can be proved obvious is by noting that there existed at the time of invention a known problem for which there was an obvious solution encompassed by the patent’s claims”. The corollaries to this statement are that an invention is non-obvious (i) if there was a known problem whose solution was unobvious, or (ii) if a hitherto unknown problem was solved. See also MPEP 2141 III: « [A] patentable invention may lie in the discovery of the source of a problem even though the remedy may be obvious once the source of the problem is identified ».

MPEP 2141 echoes KSR in these terms (comment added): «the Federal Circuit had erred in four ways: (1) by holding that courts and patent examiners should look only to the problem the patentee was trying to solve (in other words the subjective problem as opposed to the objective problem)……»

MPEP 2143 quotes as an example (in outline): « The nature of the problem to be solved … would have led one of ordinary skill in the art to choose … ».

35 USC §103 governs obviousness without mentioning problem-solution, but is structured in a way that accommodates the formal problem-and-solution approach. It specifies “A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed (novelty), if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. … ».

  • 103 specifies that a novel invention is taken as starting point for considering obviousness ; this corresponds to the foundation of the EPO’s objective problem-and-solution approach for assessing inventive step which is restricted to novel inventions. In contrast a « subjective » problem-solution analysis can be made with any invention, novel or not. Restricting the analysis to novel inventions, is thus pertinent to an objective assessment of obviousness.

Discussing « the differences between the claimed invention and the prior art » as per §103 corresponds to the step of identifying the distinguishing features of the claimed invention over the « primary reference » which is like the closest prior art in the EPO Guidelines.

  • 103 specifies that « the claimed invention as a whole would have been obvious … to a person having ordinary skill in the art ». This corresponds to the last step of the EPO approach and accommodates different ways a notional skilled person would assess obviousness, including a could-would paradigm. Moreover « before the effective filing date of the claimed invention » corresponds to a “no hindsight” approach necessary for the way the objective problem must be formulated.

For assessing obviousness, the traditional TSM (i.e., Teaching-Suggestion-Motivation) test is compatible with the EPO’s Could-Would approach which is also compatible with KSR according to which a skilled person faced with a known problem having a known solution would solve the problem in an obvious way, even without any explicit motivation.

What’s more, addressing the question of obviousness to a notional skilled person confirms the idea that obviousness must be assessed in an objective way, rather than subjective.

  • 103 therefore has the necessary framework for the formal problem-and-solution approach leaving room for a step of setting up an effect-based objective problem, which could be derived from US Case Law. For example, the objectivity of the problem corresponds to the KSR approach according to which the analysis must be based on a problem with the objectively closest prior art, not the subjective problem the inventor was faced with.

In summary, there is a plausible case that the US law on obviousness is indeed compatible with the above-explained EPO problem-and-solution approach. It could even be said that the steps of the problem-and-solution approach appear to have been inspired by US law and practice!

Under present working styles, USPTO examiners concentrate on the claims and spend little or no time reading the description. If they are to initiate obviousness rejections using the problem-and-solution format they would have to change habits and consult the description to locate any effects related to the distinguishing features.

I remark that the problem-and-solution approach is not a new statement of the law of obviousness: it is a statement of practical steps to be taken by a practitioner in order to come to an objective assessment of obviousness/non-obviousness compatible with the Statute Law and Case Law. It is an approach designed for large organizations like the USPTO who need to maintain uniformity.

All of the ingredients for this approach are present in US practice, but so far were dispersed and not arranged in a systematic way. If the ingredients could be assembled into a coherent package they could be presented under a new name that reflects the underlying concept of objectivity. For example, a new USPTO version of the problem-and-solution approach derived from US roots could be re-baptized « an objective approach for assessing inventive step » based on a doctrine of objectivity derived from the Case Law.

So far, the MPEP does not present a coherent objective approach for assessing obviousness, but conceivably in the not too distant future the USPTO management may wake up and consolidate its efforts for quality patents by promoting such an approach in the MPEP. It would be a good idea to educate examiners on the approach, and encourage them to present both obviousness objections and reasons for allowance in this way. And it would be a good idea to encourage applicants/users to use this format for their arguments.

In the meantime, applicants using the USPTO do not have to wait. They can already formulate their arguments for non-obviousness in problem-and-solution format. I think it is true to say that USPTO examiners are familiar with the problem-solution paradigm and are receptive to arguments in this format.

In my view, the problem-and-solution approach — or objective approach for assessing obviousness — could only be effective in making examination less erratic if there were a cooperation between the USPTO and users. Simply by incorporating the objective approach in the MPEP, candidates for the patent bar exam can be tested on it by ad hoc multiple-choice questions and it will rapidly become standard practice.

Conclusion

The US Law on obviousness is indeed compatible with the EPO problem-and-solution approach. The USPTO, unlike the EPO, may be bound by the ratio decidenti of superior court decisions, but this should not impede completing the MPEP with instructions like the problem-and-solution approach. All that is needed is to arouse interest in potential long-term advantages for the USPTO notably the perspective of increased quality. Application of the approach does not imply any change in the Statute or Case Law, simply a determination to complement the current piecemeal guidelines by a coherent methodology.

It follows that the USPTO not only could adopt an approach for assessing obviousness like the EPO problem-and-solution approach, but in my view the quest for quality is a good reason why it should do so.

A fuller analysis of the problem-and-solution approach in European claim drafting practice is given in the 2-volume book Drafting & Amending European Patents available from www.shopmybooks.com, key in “patent drafting” or from this link. You have to purchase each volume separately and they will be sent together.

The Author

Brian Cronin

Brian Cronin is a British Chartered Patent Attorney and European Patent Attorney with over 45 years experience, having a technical background in physics and physical chemistry. His practice Cronin Intellectual Property is located in Nyon, Switzerland. Apart from drafting at work and supervising trainees, he has been giving courses for drafting European patents since 1992. His book Drafting & Amending European Patents condenses his vast experience into a comprehensive analysis for seasoned professionals and beginners. It contains numerous references to US practice and will be useful to US practitioners interested in protection in Europe.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 13 Comments comments.

  1. Karl Rackette January 14, 2017 2:58 pm

    Well done, Brian!
    Thank you for that contribution.
    I fully agree and hope that we will see harmonizion going forward towards this method of assessment of non-obviousness.

  2. Lorenzo Fabro January 15, 2017 5:19 am

    Very detailed and useful article, Brian!
    I think one of the issues is that we have on one hand the well settled could-would approach adopted by the EPO and, on the other hand, an apparent lack of motivation for the PHOSITA to do a specific combination in some obviousness rejections under the US practice.
    Adopting the problem-and-solution approach with specific guidance in the MPEP may contribute to alleviate this apparent lack of “objectivity” in assessing inventiveness in the US and improve harmonization between the patent systems.

  3. Curious January 15, 2017 11:06 pm

    Max Drei — is that you? There is nobody I know of who wants to push EPO patent examination onto the USPTO more. In fact, I know of nobody else pushing it. I would be shocked if it wasn’t you.

    The problem/solution approach has just as much hocus-pocus involved as the current approach.

    I think it is true to say that USPTO examiners are familiar with the problem-solution paradigm and are receptive to arguments in this format
    LOL — you cannot be serious. USPTO examiners want to see amendments — preferably lots of them.

    This is a powerful tool for identifying equally the presence or the absence of an inventive step as it focalizes attention on the essential parameters.
    Sorry — “inventive step” is inconsistent with the notion that the claimed invention, AS A WHOLE, must be obvious according to US law. Do not pass GO. Do not collect $200.

    So far, the MPEP does not present a coherent objective approach for assessing obviousness, but conceivably in the not too distant future the USPTO management may wake up and consolidate its efforts for quality patents by promoting such an approach in the MPEP.
    You really don’t understand US law, do you? Let me clue you into something — the Patent Office doesn’t get to make law. The USPTO follows and applies the law, but making the law is not one of the things the USPTO gets to do.

    Establishing the objective technical problem to be solved
    Also potentially inconsistent with US law. See Leo Pharmaceuticals Products v. Rea, 726 F.3rd 1346, 1357 (Fed. Cir. 2013) (“an invention can often be the recognition of a problem itself”).

  4. step back January 16, 2017 1:13 pm

    Curious,
    “Law” per se is not an argument. It merely says here is what we were doing before and your new method is inconsistent with what we were doing before.

    With that said however, we Yanks have a way more powerful argument: We have been doing the patent-incentivized innovation thing on a consistent and successful basis for over 200 years.

    Over that 200 year history we have learned a thing or two about what innovation is is and how to successfully encourage it.

    The first thing we learned is that one shoe does not fit all. All inventions do not start with recognition of a “problem” followed by methodical marching forward to a “solution”. Hence in our statutes we have an oft ignored bit about patentability not being negated by the way in which the invention was arrived at. Maybe the inventor was a genius and arrived at it with a single breath of inspiration and an epiphany. Maybe the inventor was a dole and slaved at it for 20 years. Doesn’t matter. What matters is whether at the relevant time, he or she added something new and useful to the progress of science and the useful arts.

  5. Brian Cronin January 16, 2017 8:20 pm

    Dear Curious,

    Please rest assured, I am not a clone of Max Drei.

    « The problem/solution approach has just as much hocus-pocus involved as the current approach ».

    Hocus pocus is defined as language or activity that is meant to trick or confuse people. Hocus pocus in discussing obviousness could for example be an examiner who raises a spurious objection of obviousness, or an applicant who argues furiously for the inventiveness of an obvious invention.

    A big difference with the problem-and-solution approach and the current US approach is that with problem-and-solution it is easier to de-hocus pocus a bogus argument than with the current US approach. Take the example of a spurious US objection of obviousness, followed by a genuine reply for inventive step, followed by « applicants arguments have been considered but are not persuasive » followed by more hocus pocus reasoning from the examiner. Under the problem-and-solution approach it is easier for the applicant to demonstrate the fallacy of the examiner’s argument and the whole procedure is more efficient. Likewise, it is easier for an examiner to shoot down bogus arguments from an applicant.

    « LOL — you cannot be serious. USPTO examiners want to see amendments — preferably lots of them. »

    Amendments are a preliminary to application of the problem-and-solution approach which is exercised on the latest claim. Of course, objections in problem-and-solution format often lead to amendments and consequential refinement of the problem.

    « Sorry — “inventive step” is inconsistent with the notion that the claimed invention, AS A WHOLE, must be obvious according to US law. »
    With US law
    I beg to disagree. Inventive step is perfectly consistent with the notion that the claimed invention, AS A WHOLE, must NOT be obvious according to US law. Did you read the article ?

    « You really don’t understand US law, do you? »
    I have a rudimentary understanding based on 40 years tinkering with the US law. Still learning. As everything is based on a piecemeal and sometimes conflicting Case-Law approach it’s difficult to keep up. As its so complex, please excuse my ignorance.

    « the Patent Office doesn’t get to make law. The USPTO follows and applies the law, but making the law is not one of the things the USPTO gets to do. »

    Agreed. That’s why the USPTO should adopt the problem-and-solution approach in its Guidelines as expressed in the MPEP. That’s not making law, it’s following established legal principles. Do you think the USPTO should not have adopted guidelines for handling Alice-type situations ?

    « Establishing the objective technical problem to be solved
    Also potentially inconsistent with US law. »

    No, I looked up the Leo decision you quoted and found the following statement of Judge Rader :
    « The inventors of the ‘013 patent recognized and solved a problem with the storage stability of certain formulations — a problem that the prior art did not recognize and a problem that was not solved for over a decade. »

    Judge Rader’s statement is perfectly good US law consistent with establishing an objective problem to be solved. The word « objective » is not directly linked with the quoted statement but his objective approach to assessing inventive step stands out in the decision.

  6. Brian Cronin January 16, 2017 8:57 pm

    Dear Step Back :

    « The first thing we learned is that one shoe does not fit all ».

    In the 200 year history of US patent law, some years ago 35 USC § 103 was introduced as a « one shoe fits all » system of addressing obviousness of all inventions.

    Although all inventions do not start with recognition of a “problem” followed by methodical marching forward to a “solution, the problem-and-solution approach does not assume this but postulates that every invention, however the invention was made, can retrospectively be boiled down to a technical solution to a technical problem once the claim is settled and the closest prior art is known.

    « In our statutes we have an oft ignored bit about patentability not being negated by the way in which the invention was arrived at ».

    This is consistent with the problem-and-solution approach whereby patentability is objectively assessed independently of the way the invention was made.

    « What matters is whether at the relevant time, he or she added something new and useful to the progress of science and the useful arts. »

    Agreed. This reflects an objective approach.

  7. Alasdair Kennington January 17, 2017 10:32 am

    In my view, the problem/solution approach at the EPO is not quite as straightforward as described in the article.

    According to Article 56 EPC an invention is inventive if it is not obvious “having regard to the state of the art”. Therefore although obviousness arguments commonly start from a “closest prior art”, an argument is valid starting from any item of prior art. Disagreements over which piece of prior art is “closest” are often pointless.

    Equally, the correct formulation of the problem is vital. It is too easy to say that the problem is to provide the technical differences between the claim and the prior art, and then state that it is obvious in the light of this problem to provide the features that produce these technical differences. Sometimes the invention lies in identifying which technical differences to provide.

    I published a long article in epi Information (in 3 parts at http://information.patentepi.com/1-16/problem-solution-approach-article-56-epc.html, http://information.patentepi.com/2-16/review-problem-solution-approach-inventive-step-under-article-56-epc.html and http://information.patentepi.com/3-16/a-review-of-the-problem-and-solution-approach-to-inventive-step-under-article-56-epc.html) in which I argued that the problem/solution approach can only validly show obviousness over the state of the art if the problem is known or obvious. If the problem is not obvious over the state of the art, then the solution is not obvious over the state of the art even if it is obvious in view of the problem.

    This seemed non-controversial to me until I realised that it implies that the EPO should make a change in the way it examines non-technical features.

    While I agree that the USPTO could benefit from using the problem/solution approach, it must only be used as a method of analysis and not as a definition of obviousness. It is important to take care that the approach is always used in a way that is compatible with the underlying law.

  8. step back January 17, 2017 4:06 pm

    I think many here are ignoring the trick phraseology, “the art”.
    What is the art?
    Is that decided on an arbitrary and capricious basis?

    What if one invents a whole new art? Then what?

    Not every invention necessarily solves a “problem” in a prior art (unless you want to arbitrarily define the problem as not foreseeing the invention)

  9. Anon January 18, 2017 7:58 am

    The carefully phrased “not a clone” raised my eyebrows.

    Too clever by half then – “not a clone” leaves the distinct possibility of Mr. Cronin being the real McCoy and being The “MaxDrei.”

  10. Alasdair Kennington January 18, 2017 10:43 am

    Dear Step Back,

    You ask “what is the art?”

    At the EPO, the state of the art (as in prior art) is defined as everything made available to the public in any way before the filing date (or priority date) of the application (Article 54(2) EPC).

    On the other hand, the person skilled in the art, as used to judge obviousness and to judge sufficient description (enabling disclosure) must be a person (or a team of people) skilled in the relevant art and can’t be skilled in everything made available to the public.

    Therefore “the art” must mean something different in different parts of the law (this hadn’t occurred to me until you made your comment). Of course, the problem of defining the art doesn’t just arise at the EPO. It is the same in the USA where the definition of the PHOSITA must depend on how you define “the art”.

  11. Brian Cronin January 18, 2017 1:17 pm

    Dear Alasdair
    Thank you for your comments.
    You are correct that the problem-and-solution approach can be discussed in a less straightforward way than I did, as you have done extensively in your epi article. But it is equally true that the approach can be summarised more concisely, simply by reciting the basic sequential steps. In fact, attorneys and examiners using the problem-and-solution approach apply these simple steps to structure their argument, without any frills.
    « although obviousness arguments commonly start from a “closest prior art”, an argument is valid starting from any item of prior art. Disagreements over which piece of prior art is “closest” are often pointless. ».
    Obviousness is assessed by considering all prior art in the field of the invention and related fields. Selecting the closest prior art is nevertheless fundamental to the EPO problem-and-solution approach to arrive efficiently at the result that the invention could be unobvious and involve an inventive step. If one starts from remote prior art over which the invention is unobvious, one would have to start all over again with the next prior art then the next until all prior art is dismissed. The EPO’s basic assumption is that if the invention is unobvious over the closest prior art, then the invention involves an inventive step without further ado.
    On the other hand, if the invention is obvious over any piece of prior art, you don’t have to look further.
    Arguments starting from different pieces of prior art are common in oppositions where if the first argument fails the second or next argument may succeed. This is strictly not the official problem-and-solution approach which requires first settling the closest prior art, but instead each argument follows a problem-solution structure as though each piece of prior art were deemed to be the closest. The EPO disapproves of this but nevertheless tolerates it.
    Disagreements over which piece of prior art is deemed the closest do indeed occur, but may not be pointless if the outcome is affected.
    « the correct formulation of the problem is vital »
    Yes, but how to get to the correct formulation ? In preliminary discussions it can happen that a proposed problem is wrongly formulated. One of the strengths of a problem-solution analysis is that it is relatively easy to pinpoint inadeqaute proposals, then adjust until a correct formulation emerges.
    « Sometimes the invention lies in identifying which technical differences to provide ».
    Could this be mainly a question of adjusting the claim wording before the final problem-and-solution analysis ?
    « While I agree that the USPTO could benefit from using the problem/solution approach, it must only be used as a method of analysis and not as a definition of obviousness. It is important to take care that the approach is always used in a way that is compatible with the underlying law. »
    I agree fully, the problem-and-solution approach is only a method of analyzing obviousness/non-obviousness. Also, I believe its proper use is fully compatible with US law.

  12. Brian Cronin January 18, 2017 1:22 pm

    In reply to Step Back :
    « What if one invents a whole new art? Then what??Not every invention necessarily solves a “problem” in a prior art »
    Here is a quotation from my book that discusses this:
    “An objection raised against the problem-solution approach by some of its opponents is that whereas it applies to improvement inventions over “close” prior art, it does not apply to inventions that arise “spontaneously” and open up a new field without improving over a prior product. This is not true. Even radical inventions can, retrospectively, be expressed in terms of a problem or fulfilling an unsuspected need or carrying out an unknown function. By expressing the problem in this way, the inventive step stands out because it is obvious that the need would not have been fulfilled or the function would not have been performed on the basis of the prior art.”

  13. Brian Cronin January 18, 2017 1:25 pm

    Anon
    As you point out, disclaimers need to be precisely worded. I should have said « not a clone of MaxDrei nor the original»