In Europe and the US, patentability depends on a showing of inventiveness that is based on similar legal requirements but practice differs substantially and the resulting patent quality varies.
Article 54 EPC specifies inventive step as a positive requirement of patentability and Article 56 specifies that
an invention shall be considered as involving an inventive step if, having regard to the state of the art (excluding earlier-filed and later-published European patent applications), it is not obvious to a person skilled in the art.
35 USC §103 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 ….
The respective legal bases are worded quite differently but the concept is essentially the same. In Europe, non-obviousness is a requirement for patentability; in the US obviousness is a condition for non-patentability. You could say it’s like “tomayto, tomahto”, a distinction without a difference, but in assessing obviousness the respective practices diverge.
The purpose of this article is to compare differences in practice in assessing obviousness in examination at the EPO and the USPTO and to examine the influence on the perceived resulting patent quality, which is a major concern for both.
At the USPTO, patent applications are rejected for obviousness (35 USC §103) already in a first Office Action by an examiner and his/her supervisor. The applicant is called upon to rebut the rejection possibly with a claim amendment, failing which the rejection is made final. The examination can be pursued and rejection confirmed or acceptance achieved by an RCE/divisional/appeal etc. The examiner has to prove obviousness to justify a rejection.
Over in Europe the examination of inventive step begins with an opinion following which the applicant is invited to comment/amend. Generally, to secure acceptance the applicant has to demonstrate the presence of an inventive step. If an agreement cannot be reached in writing, the applicant can request “oral proceedings”, which is a formal hearing before the examining division comprising a panel of three examiners. If acceptance is not agreed upon at the oral proceedings, or if the applicant does not request oral proceedings, the application can be refused by a reasoned written decision. The decision mechanisms on patentability/obviousness are thus different in the US and Europe.
The US examiner/supervisor takes the decision to refuse or accept based on hierarchy. Individual examiners from different Art Units may adopt different approaches based mainly on their supervisor’s opinions. Obviousness can be treated differently from one Art Unit to another. In Europe, one principal examiner leads the examination procedure but decisions on inventive step are taken by majority vote of the three examiners making up the examining division. All three examiners are drawn from the same pool of examiners in a given technological area, so decision-taking is non-hierarchical.
The institution of three-examiner examining divisions was created when the EPO was set up, originally to even-out divergences between examiners coming from different national backgrounds. The aim was to create a harmonious European practice from the patchwork of national traditions. Doubtlessly, this aim was accomplished successfully. Although examiner nationality is no longer a significant factor, the institution of examining divisions continues to be an important influence in negating idiosyncrasies by individual examiners, leading to a relatively uniform way in coming to decisions on inventive step.
When the principal examiner is ready to accept a European patent application, he or she must obtain the approval of the two colleagues on the examining division, and for this fills up an internal form called the Votum for Grant. To be accepted, all inventions must involve an inventive step which happens to be the most controversial issue. The Votum is accordingly structured to set out the problem and its solution so inventive step can be agreed upon. If as usual the two colleagues agree, they sign the Votum and the application passes to acceptance.
For refusing a European patent application, there is no counterpart to this internal form but the examining division has to issue a reasoned written decision that is signed by all three members. Decisions to refuse are open to appeal.
Following its maxim of procedural economy, the EPO has developed the so-called problem-and-solution approach as a way of systematically and objectively assessing inventive step for novel inventions in all areas of technology. This is convenient for the Office as it needs a uniform approach for assessing the inventive step of enormous quantities of European patent applications, given that inventive step is a requirement for patentability that has to be examined in each case to come to a decision for acceptance or refusal.
The EPO’s official problem-and-solution approach for assessing inventive step is based on the closest prior art available during examination and the latest wording of the claim at the decision-taking point. It is compatible with, but goes beyond, the conditions of 35 USC §103 whose framework is extended by placing emphasis on choice of the closest prior art, by introducing an identification of the effects associated with the differentiating features and by expressing the step in going from the closest prior art to the claimed subject matter in terms of the solution to an objective technical problem. It does not lead to a ready-made answer on inventive step but instead rationalizes the analysis by focusssing on its essential parameters in a structured way.
In adopting the problem-and-solution approach, the EPO concentrated on objective criteria and dismissed secondary considerations in support of inventive step as largely irrelevant. Affidavits/declarations on obviousness from experts are formally acceptable as evidence, but no or very little weight is given to such evidence which is not regarded as a substitute for an objective technical analysis. In the US, expert affidavits/declarations play a role in establishing the level of skill of the notional PHOSITA, as though he/she/it were a real person.
There is no counterpart to the EPO’s problem-and-solution approach in the MPEP. Obviousness is dealt with in MPEP 2143 in a piecemeal fashion with multiple examples of specific situations from different Case Law decisions, including instances where secondary considerations were taken into account. The MPEP sometimes refers to inventions as solutions to problems, but there is no development of a coherent methodology using the problem-solution paradigm for assessing inventive step as in Europe. The key decision on obviousness, KSR vs Teleflex, upset the universality of the established Teaching-Suggestion-Motivation test and introduced the notion of a skilled person with “ordinary creativity”, thereby increasing the difficulty of assessing obviousness. It also stated that 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. This seems to be an embryo for a problem-solution type approach, but has not been developed into a systematic and universal methodology for assessing obviousness at the USPTO. Instead, in the US everyone is left to adopt their own approach in arguing for or against obviousness, which leads to a lack of uniformity in the end result.
Achieving high patent quality is a declared aim of both EPO and USPTO. Patent quality is a relative notion, see Gene Quinn’s article Garbage in – Garbage out: A quality patent requires patent quality from the start, January 25, 2016. In the present article we are not concerned with obtaining high quality individual patent applications, but instead with overall patent quality as perceived by the users. Proper handling of inventive step is surely a factor in the overall quest for patent quality as it is an essential but elusive ingredient of quality. As Gene Quinn points out, the quality of output depends on the quality of input, and the quality or consistency of the input will of course depend on those who draft and defend patent applications.
Here is where the European Qualifying Examination comes in. The EQE was instituted when the EPO was set up with a view to providing high-quality input to the EPO over the long term and it has doubtlessly succeeded in this. By now, over 6,000 European Patent Attorneys have qualified via the EQE which tests ability to draft inventive claims, to argue in support of inventive step in reply to communications and to argue against inventive step in oppositions. The EPO played a key role in the exam inter alia by promoting the use of the problem-and-solution approach for assessing inventive step. Over the years this systematic approach was adopted by the profession and this has led to a relatively homogeneous input for the EPO who can boast of the quality of the patents it grants.
This is not to say that the USPTO has a low quality input, but no doubt a less homogeneous one.
The US patent bar exam is made up of multiple choice questions directed to different areas of practice from the MPEP including aspects of obviousness. The bar exam extensively tests knowledge of the MPEP but, unlike the EQE, does not test ability to develop inventive step situations from all aspects according to a coherent approach. It encourages knowledge of diverse official practices on obviousness coming from different Case Law precedents, but does not inculcate a uniform methodology comparable with the problem-and-solution approach. Incidentally, MPEP practices are also taken over by many ex-examiners who become Patent Attorneys.
It follows that the input to the USPTO reflects the diversity of US practices on obviousness which, together with the decision-taking structure, contributes to a lack of uniformity in its output, the perceived patent quality.
The EPO proudly boasts that it is consistently rated number one for patent quality among the world’s largest patent offices based on user surveys. Patent quality is also a major objective for the USPTO, who are striving to improve their lower user ratings. This article suggests that a contributing factor to the EPO’s perceived high quality is the coherent way inventive step is handled, this involving the institution of examining divisions and use of the problem-and- solution approach by the examiners and by EQE-qualified practitioners. As opposed to this, the USPTO’s lower rating can in part be explained by its piecemeal handling of obviousness and less coherent input. Improving patent quality is a mantra of the USPTO management. If they could take steps to improve the coherence in handling obviousness, improved quality would follow.
A follow-up article questions whether the US Law on obviousness is compatible with the EPO problem-and-solution approach and whether the US could adopt a comparable objective approach for assessing obviousness.
A fuller analysis of inventive step 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.
Join the Discussion
9 comments so far.
Lorenzo FabroJanuary 15, 2017 05:06 am
Excellent article Brian!
Brian CroninDecember 29, 2016 12:20 pm
Thank you for your comments Charles. I’ll try and make some brief comments in reply.
• Quality/enforcement/legal framework: Quality is a flexible notion. My article takes the EPO/USPTO definition as baseline: a granted patent that fulfills all legal requirements and stands a good chance of survival if challenged. From a patentee’s standpoint quality may mean having a strong patent that gives broad and useful coverage and resists and deters all challenge. The whole legal framework needs to be factored in, but this goes beyond a metric of the EPO/USPTO’s quest for quality patents.
• Frivolous/overbroad: in my experience most applications of this type are disposed of during the examination process.
• Common law/supranational organization. The fact that the USPTO may be bound by the ratio decidendi of superior court decisions does not prevent it from giving instructions (viz. MPEP) how examiners should handle cases, providing these instructions do not clash with the case law. In Europe, the EPO Boards of Appeal are not bound by national court decisions, and vice versa. If an EPO granted patent is revoked by a national court, this is part of the normal procedure; it does not put into question the EPO’s autonomy.
• I agree with you that all influencing factors should be taken into account, but this is complex and should not be taken as a reason not to deal with individual aspects.
Thanks again for your comments.
Charles ClarkDecember 28, 2016 09:21 am
Good article and I agree that the quality of the input is crucial to the outcome – however, the outcome should not be seen as the issued patent, but rather the ability to enforce a patent in a fair and balanced way. With that in mind, I feel the legal framework in which the patent system is embedded should also be discussed as part of the IP quality ecosystem.
Frivolous applications and overly broad claim drafting is, in my opinion, encouraged where the validity of a patent is presumed so strongly once the patent office issues a patent. Add to that the cost of litigation and potential damages that can be awarded and frivolity is further encouraged.
In addition, the US is a common law legal system, so I assume the USPTO is bound by the decisions of the court. In contrast the EPO is a supra-governmental organisation that, broadly speaking, can make its own schemes for assessing inventiveness. National court decisions in European countries on the validity of a patent often contrast those of the EPO’s various divisions.
We need a strong patent system in the US, with appropriate checks and balances on the validity of the patent. You’re right, this starts with the quality of the patent attorney’s drafting skills, but all influencing factors need to be accounted for when looking for a way to improve the quality overall.
Brian CroninDecember 22, 2016 01:56 pm
Thank you Edward for your positive approach. Keep on the look out for my follow-up article.
Brian CroninDecember 22, 2016 01:50 pm
Benny, you are correct that the EPO fee structure has practically eliminated frivolous applications. But I think that the people who respond to questionnaires on patent quality are not the sort of people who indulge in frivolities. So frivolous applications probably don’t impact the patent quality statistics and the European/US difference.
Brian CroninDecember 22, 2016 01:41 pm
Thanks for your comment Paul. I’ll be publishing a follow-up article where I discuss the compatibility of US law with the EPO problem-and-solution approach.
Edward HellerDecember 22, 2016 01:22 pm
Paul, I agree in spades that the US system for assessing an inventive step is essentially vacuous and completely subjective. I laugh and cringe when people here state that the purpose behind the creation of 103 in US law was to replace a subjective test with an objective one, as if that purpose was achieved simply by wishing it were true.
It is time for all of us here to step back and adopt the European approach. It is well thought out, and excellent.
BennyDecember 22, 2016 06:54 am
The fee structure in the EU discourages frivolous applications, which probably also contributes somewhat to the overall perception of patent quality compared to the US.
Paul ColeDecember 21, 2016 06:50 am
It should be borne in mind that the EPO Technical Problem approach is rooted in PCT Rule 5.1, which represents a 1970 consensus about appropriate drafting practice and deserves to be quoted in full and learned by heart by all who practice in our field:
5.1 Manner of the Description
(a) The description shall first state the title of the invention as appearing in the request and shall:
(i) specify the technical field to which the invention relates;
(ii) indicate the background art which, as far as known to the applicant, can be regarded as useful for the understanding, searching and examination of the invention, and, preferably, cite the documents reflecting such art;
(iii) disclose the invention, as claimed, in such terms that the technical problem (even if not expressly stated as such) and its solution can be understood, and state the advantageous effects, if any, of the invention with reference to the background art;
(iv) briefly describe the figures in the drawings, if any;
(v) set forth at least the best mode contemplated by the applicant for carrying out the invention claimed; this shall be done in terms of examples, where appropriate, and with reference to the drawings, if any; where the national law of the designated State does not require the description of the best mode but is satisfied with the description of any mode (whether it is the best contemplated or not), failure to describe the best mode contemplated shall have no effect in that State;
(vi) indicate explicitly, when it is not obvious from the description or nature of the invention, the way in which the invention is capable of exploitation in industry and the way in which it can be made and used, or, if it can only be used, the way in which it can be used; the term “industry” is to be understood in its broadest sense as in the Paris Convention for the Protection of Industrial Property.
The language of this rule has been copied into EPC Rule 27 and provides support for the problem/solution approach which has been adopted by the EPO Appeal Boards since the start. As Brian Cronin indicates, it provides a useful and workable framework for examiners and attorneys alike. We play from the same rulebook and both know what the relevant rules are.
When the Patents Act, 1977 came into effect in the UK, unfortunately the PCT rule was not copied in, and the UK courts do not follow it, although they sometimes follow the EPO approach as a cross-check. Nor was it copied into US law.
The current UK test is Windsurfging/Pozzoli where Jacob L.J. suggested the following:
(1)(a) Identify the notional “person skilled in the art”
(1)(b) Identify the relevant common general knowledge of that person;
(2) Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;
(3) Identify what, if any, differences exist between the matter cited as forming part of the “state of the art” and the inventive concept of the claim or the claim as construed;
(4) Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?
It does not take advanced skills in legal analysis to perceive the vacuum at the heart of this test. Useful preliminary enquiries are prescribed, but when it comes to make-your-mind-up time the examiner, judge or other decision-maker is left to his or her own devices and without the help provided by r.5(1)(iii) PCT. Indeed the decision maker is required by the statute to weigh the totality of the evidence and reach a conclusion without specific guidance as to what is looked for. There is a wide range of evidential topics, and the identity of the critical topic which shifts the decision one way or another varies randomly from case to case which is a systematic inevitability but is not a recipe for a progressive development of case law leading to a straightforward, reproducible and widely (if not universally) applicable test. Study of the Graham/KSR test in the USA shows the same deficiency for the same reasons, and supply of multiple dicta in KSR is no substitute for formulation of a systematic and widely applicable approach.
There is, of course, a way out. The US courts could treat the PCT and its regulations as of persuasive authority (since the PCT was a US initiative), and move towards the highly workable problem/solution approach adopted here. Even Federal Circuit judges have on occasions expressed admiration for the EPO approach.