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 obviousness, discusses 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.
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.