BGH on Patentability of Mathematical Methods - "Flugzeugzustand"

The decision BGH X ZR 1 /15 "Flugzeugzustand" relates to the patentability of a mathematical method used in the context of monitoring airplane machinery. A rough (and non-official) translation of the headnote is as follows:

a) In view of §1 par. 3. Nr. 1 PatG, mathematical methods are patentable only when they contribute to the solution of a specific technical problem with technical means.

b) A mathematical method can be considered non-technical only when it does not have, in the context of the claimed teaching, any relation to the purposeful use of natural forces.

c) A sufficient relation to the purposeful use of natural forces exists when the mathematical method is used for the purpose of obtaining more reliable information on the state of an airplane using the available measurement data to thereby influence the functioning of the system used for detecting that state. 

d) Subject-matter which is novel and based on an inventive step cannot be considered non-patentable only because it does not offer any recognizable advantage over the prior art.

The decision clarifies that the exception of §1 par. 3. Nr. 1 PatG has to be interpreted very narrow and that even a remote relation to a tangible technical device ("the purposeful use of natural forces") is sufficient.

Letter d) highlights an interesting contrast between the German case-law and the case-law of the technical boards of appeal, where a technical advantage is sometimes required.

Vringo v ZTE: inventive step and the impact of proposed changes to a standard

From Jan Pot (Brinkhof N.V., Amsterdam) comes news of a recent court battle between Vringo and ZTE, which led to a ruling late last month from the District Court of The Hague. The battlefield was Vringo’s EP 1 186 119 (“EP 119”), which the court nullified for lack of inventive step.  This decision [in Dutch here, and with an informal English translation here] contains some interesting considerations on the closest prior art and problem inventions. Jan takes up the story as follows:

Since 2012, ZTE and Vringo have been involved in litigation on a number of patents, which are part of a portfolio of ca. 500 patents which Vringo purchased from Nokia. EP 119 is one of those patents. In the Netherlands, litigation started in 2014 when the Dutch customs stopped several shipments of ZTE equipment. Vringo attached part of these goods, alleging infringement of EP 119. The preliminary relief Judge of the District Court The Hague refused to lift this attachment, inter alia because he considered the outcome of nullity proceedings on EP 119 too uncertain.

In 2007, EP 119 was upheld by the European Patent Office's Technical Board of Appeal (TBA) in opposition proceedings initiated by Qualcomm. It has also been the subject of infringement proceedings in Germany, where in 2013 the Landgericht Mannheim refused to stay the infringement proceedings pending the nullity proceedings before the Bundespatentgericht as it considered the chance of revocation insufficient.

EP 119 claims a method for transmitting a certain sequence of symbols, and is according to Vringo essential for the UMTS standard. More specifically, it pertains to the situation in which a UMTS base stations transmits so-called synchronization information on the synchronization channel when a functionality called time-switched transmit diversity, or TSTD, is in use.

ZTE advanced several nullity grounds, including lack of novelty, lack of inventive step and added matter. The Court only dealt with inventive step. It found the patent obvious, starting from the latest draft for the UMTS standard published before the priority date, referred to as TS 25.211 V2.1.0, as closest prior art, in combination with a document referred to as TSGR1#5(99)677. This document, which was published by one of the working groups working on the UMTS standard at the time, proposed changes to the draft standard. The Court held that the skilled person would read these two documents together, and in doing so would be confronted with the problem for which the patent aims to provide a solution.

Vringo argued that EP 119 was in essence a problem invention. However, the Court held that Vringo failed to make sufficiently clear why that would be the case. A number of factors were only first advanced by Vringo during the hearing, while the same number of factors were only briefly touched upon in a rather difficult to follow declaration by its expert, Dr. Moulsley. Neither the patent nor Vringo’s Statement of Defence mentioned these ‘pieces of the puzzle’ as joint causes of a problem. What’s more, the District Court did not find these arguments persuasive when looking at other prior art publications and an e-mail exchange between several technical experts who already discussed the issue. Although Vringo disputed that interpretation of the e-mail exchange, it did not provide any convincing explanation as to what they would then be discussing. Finally, the Court stated that restraint must be observed in assuming the existence of a problem invention, referring to TBA case law (T 971/92).

The Court then concluded that ZTE had rightly argued that there were essentially two options to solve the problem, both of which were obvious to the skilled person. On this issue the Court disagreed with the TBA, which had held that there were multiple options. The viability of those other options was discussed before the Court by ZTE and Vringo. In the end and having heard both parties’ experts, the Court was of the opinion that the other options were either not viable or less obvious. In other words, the Court was convinced that the two options mentioned by ZTE were the “natural” solution to redress the problem with which the skilled person was confronted due to the change made by TSGR1#5(99)677. The Court concluded that the choice for the one of the two obvious solutions is not inventive and that no pointer to either one is required.

Brinkhof, through a team consisting of Ruprecht Hermans, Richard Ebbink, Gaëlle Béquet and Jan Pot, represented ZTE in these proceedings.  This summary is based solely on the decision itself and not on information from the file not reflected in the decision.

Slide to Unlock Image Patent-eligible but Not Inventive - BGH Entsperrbild

In the case X ZR 110/13 "Entsperrbild", the BGH had do decide on a patent relating to the unlocking of a mobile phone. The key feature is that an icon (unlock image - the arrow on grey background in the figure on the rhs) is moved together with the finger when executing the unlock gesture.

The Bundespatentgericht had disregarded the icon in the assessment of inventive step and judged that it did not contribute to the solution of a technical problem.

The BGH did not agree. According to the headnote, features relating to the conveying of information in a patent claim need to be subject to a special treatment (unofficial translation by the author of this note):

1. Statements relating to the conveying of certain information contents and hence aim at having impact onto the human imagination or intellectual power are, as such, disregarded in the assessment of inventive step. Statements relating to information which shall be conveyed according to the technical teaching of the invention are apt to support the patentability in view of inventive step only insofar as they determine or at least influence the solution of a technical problem by technical means.
2. Information-related features of a patent claim are to be examined as to whether the information to be conveyed is, at the same time, an embodiment of a means for a technical solution, which must not already be indicated as such elsewhere in the patent claim. In such a case, the means for the technical solution as to be considered in the assessment of inventive step.

The interesting piece here is the not already indicated elsewhere portion. The BGH bases its analysis on a fairness argument. According to the senate, "it would not be justified to exclude the technical effects of the conveying of information from the assessment of inventive step only because these are claimed, in the patent claim, merely in the form of the presentation of certain information."

I presume this can be interpreted as follows: In the case at issue, the unlock image was supposed to solve the technical problem of providing optical feedback to the user. Had the patentee claimed "means for providing optical feedback" covering both tangible technical means as well as the presentation of certain information, this broader "means for providing optical feedback" would have had been clearly considered in the assessment of inventive step. The Fact that the patentee claims a narrower, more specific solution, it would not be justified to exclude this from the assessment of inventive step. If, however, the broader "means" is already claimed elsewhere (and therefore contributes to inventive step), the additional information-related features would not entail any further technical contribution and can be disregarded.

In the case at issue, the feature of using a "movable" image for providing optical feedback was, in contrast to the analysis of the Bundespatentgericht, considered to be an information-related feature contributing to solution of a technical problem relevant for inventive step.

This finding was clearly a progress in our case-law but a phyrric victory for Apple: The feature was considered but found to be obvious over the art.


 

T2201/10 Do not Destroy the Foundations of your Argument

The decision T 2201/10 deals with the proper application of the problem-and-solution approach.

Our readers will know that inventiveness can usually be disproven (some say that the "unless" in Art. 56 EPC means that there is a legal presumption of inventiveness) but not proven.  The defender of a patent or application has to rely on secondary indicia and is otherwise limited to criticise the arguments of his challenger.

This decision in very precious in that it establishes a positive test for inventive step and does this in a very clear and definitive way.

A rough translation of the an excerpt of item 5.1.3 if the decision from the French is as follows (emphasis added):

The problem-solution approach ... further leads to the rejection of any analysis according to which the person skilled in the art would have modified the closest prior art in a way which would be in conflict with its reason of existence unless its very quality as "closest prior art" originally accepted for that document would be negated.

In other words, the finding that the invention as claimed departs from the disclosure of a document of the prior art in what are - in view of the objectives at which that prior art aims - the foundations of the latter, is as such sufficient to conclude that an inventive step of the invention vis-à-vis this prior art exists.

In the case at issue, if D1 is kept as the closest prior art, the skilled person would have excluded every modification going against the aim of the assembly which is described therein, i.e. every modification which would result in a reductions of exchange within the refrigerating fluid.

Not so "obvious to try": British appellate court revisits inventive step in Teva v Leo

From Paul Inman and Andrew Maggs (Wragge Lawrence Graham & Co.) comes this helpful account of the recent appeal decision in an England and Wales patent validity dispute, Teva v Leo. Thanks, Paul and Andrew!

"Leo's patent not "obvious to try" because there was "no reasonable expectation of success" regarding the claimed invention

The Court of Appeal has overturned Birss J's decision in Teva v Leo and ruled that Leo's patents regarding its Dovobet ointment for psoriasis are valid. In doing so, Sir Robin Jacob has provided useful guidance on the "obvious to try" doctrine, the relationship between real persons skilled in the art and the hypothetical skilled addressee, and the importance of considering the wider context in which the invention was made.

Background

LEO's patents concerned a combination of two active ingredients (calcipotriol (a vitamin D analogue) and betamethasone (a corticosteroid)) in a non-aqueous solvent (Arlamol E). At first instance, Birss J adopted an unusual approach to the assessment of Teva's obviousness challenge, as discussed here. It involved:

• the skilled addressee starting from the common general knowledge (which included a need for a non-aqueous topical medicament containing calcipotriol and betamethasone);
• the skilled addressee being presented with a piece of prior art ("Turi") which disclosed Arlamol E's use as a solvent for a corticosteroid alone; and
• the skilled addressee deciding to include it in his list for further investigation.

Birss J found fact that Arlamol E was not a usual solvent which a formulator would try to use. (In fact he held that it was not common general knowlegde, and that Turi would not have been found in a literature search). Despite this, in view of Turi, "there was a sufficient prospect of a positive result in the tests with this compound to make it worth testing". Upon carrying out the "entirely routine" screening he would find that Arlamol E was in fact a good solvent to use in the combination. Consequently, ruled Birss J, the 'invention' was obvious to try and the patent was invalid.

Birss J had erred in principle

In its decision of 28 July 2015, [2015] EWCACiv 779, the Court of Appeal disagreed with Birss J's analysis.  Birss J's principal error was in failing to attribute the necessary standard of expectation when applying the "obvious to try" test. Contributing to this was Birss J.'s additional failure, in Sir Robin Jacob's view, to impute to the notional skilled addressee "the real prejudices and practices of persons skilled in the art" about using Arlamol E as the solvent, his failure to recognise the importance of certain findings of fact which did not support a conclusion of obviousness, and his failure to consider the wider circumstances of a long-felt and unmet want preceding the "significant advance" (and "advance in human knowledge") represented by the invention.

The "obvious to try" standard

As we noted in our report on the first instance judgment in this case regarding the "obvious to try" doctrine, Birss J. had stated:

"It is wrong to ask whether something might achieve a particular desired effect. It is correct to ask whether it was obvious that it would achieve that effect".

While this statement appears to be correct, Birss J had apparently proceeded to answer the first (i.e. the "wrong") question, not the second one.

Sir Robin Jacob pointed to other passages of Birss J's judgment as revealing the error, including extracts from the following:

• "[t]he skilled formulator would carry out compatibility tests on a number of possible solvents. The number would be about 10 to 20" (paragraph 72),
• "[t]he notional skilled formulator would test some familiar compounds but .… would not be put off from including unfamiliar compounds merely because of their unfamiliarity" (paragraph 79), and
• the disclosure of Turi "would be sufficient grounds to include [Arlamol E] in pre-formulation tests. Based on what the skilled formulator knew about it at the time there was a sufficient prospect of a positive result in the tests with [Arlamol E] to make it worth testing. It was obvious to do so" (paragraph 92).

However, Sir Robin Jacob said that the inclusion of a specific solvent in a list of solvents to be tried is not sufficient to render the claimed invention (which covered only that one solvent) obvious. Quoting from his own judgment in St-Gobain v Fusion Provida] he said:

"Mere possible inclusion of something within a research programme on the basis you will find out more and something might turn up is not enough. If it were otherwise there would be few inventions which were patentable. The only research which would be worthwhile (because of the prospect of protection) would be in areas totally devoid of prospect".

This was so even though the field in the present dispute was empirical, such testing "was entirely routine" and once tested, Arlamol E was found to work.

In order to render the invention invalid, Arlamol E itself had to be obvious to try – and the prospect of success had to raise it over and above above other candidates. A finding that it was obvious to include Arlamol E in his list of solvents to try, and that trying it would in fact have led to success, was not enough: the later finding did not alter the expectation of success regarding Arlamol E before conducting the test. As Sir Robin Jacob said: "well-worth investigating" is not the same as "a fair expectation of success".

The findings of fact did permit a finding of obviousness

Sir Robin Jacob explained further, that the judge had missed the real significance of the evidence and of his own findings of fact. The judge had accepted evidence that to the skilled person, identifying a non-aqueous solvent which would actually work to produce a stable ointment was not easy. Sir Robin Jacob said:

"The Judge said that Arlamol E had the desired characteristics and so there were "sufficient grounds to include the compound in pre-formulation tests". I do not see that follows. Many non-aqueous solvents may have had the desired characteristics – propylene glycol is a particularly good instance. But there was nothing disclosed about Arlamol E that made it anything like an outstanding candidate – any different from any other non-aqueous solvent.

The Judge said that "there was a sufficient prospect of a positive result in the tests with this compound to make it worth testing." But that is to say no more than that there was a sufficient prospect of success with any non-aqueous solvent. On this analysis all such solvents were worth testing. Yet the evidence had shown that the "apparent pH" problem was real and that one could not say that just because a solvent was non-aqueous it would work."

Sir Robin Jacob said that he was confirmed in his view that the patent was not obvious by a further consideration. He noted that Birss J. had "dated all his findings about common general knowledge as at the priority date, April 1999", but that in fact all those facts had been common general knowledge since at least 1995, and yet "no-one found a way to put the actives together in an ointment (with any non-aqueous solvent, not just Arlamol E) until Leo  did it with the invention in the patents". Despite the long-felt want and the advance represented by Leo's solution, there was "no explanation of why that solution was not done before when it could have been". As the final nail in the coffin for Teva, the Opposition Division of the European Patent Office (EPO) had, after Birss J's first instance judgment (with which it was provided), declined to follow the judge's reasoning and rejected Teva's opposition. Sir Robin Jacob was "not surprised".

The skilled addressee of the patent

Behind the judge's conclusion on obviousness lay also his assessment of the skilled addressee of the patent and his or her common general knowledge. Sir Robin Jacob observed as "rather odd" the judge's suggestion that the notional person skilled in the art would be different from the real skilled person. Birss J had said:

"The skilled formulator would decide what compounds to test based on the properties of the compounds. LEO emphasised Professor Brown's evidence that familiarity with such compounds would be a critical element in the skilled formulator's thinking. I accept that familiarity would always play a part in the choices made by real formulators working in real organisations since it maximises the chances of success by using tried and tested compounds which are often found to work. However I find that the notional skilled formulator would not be as conservative in his or her thinking as that evidence might suggest…"

Sir Robin Jacob did not like this. He said:

"But the law of obviousness attributes to the notional person the real prejudices and practices of persons skilled in the art. For instance the "bagridden" mindset of real vacuum cleaner designers was attributed to the person skilled in the art in Dyson v Hoover [2002] R.P.C. 22. "

This is a reminder worth heeding.

It may perhaps be queried whether Birss J's comment was merely an expression of disagreement with LEO's expert as to the mind-set of the real (and hence the notional) skilled addressee. However in view of Sir Robin Jacob's other conclusions (discussed above) the point is probably moot.

The Pozzoli approach

As we noted in our report on the first instance judgment, Birss J.'s approach to obviousness appeared start with the traditional UK Pozzoli approach, but then (at stage 3 which requires identification of the difference between the pleaded prior art and the invention) depart from that and morph into more of a "problem-solution" approach. Sir Robin Jacob did not criticise Birss J.'s choice not to adopt the whole Pozzoli approach (or the whole problem-solution approach). He did however note at the outset to his judgment that both were "often a helpful way of approaching the problem" of obviousness. Further, towards the end of his analysis, he did perhaps hint that a full application of either the Pozzoli or the problem-solution approach might have assisted in the present case. At paragraph 33 he said:

"Putting this point into a Pozzoli structured analysis, the difference between the prior art (Turi) and the invention was that Turi was a mono active product using Arlamol E. The invention is a double active product. Turi would be seen as using one of a large number of possible non-aqueous solvents. It might provide stability for the two actives, just as any of the others might. But there was no reasonably optimistic expectation that it would. Finding that it really did was an invention and an advance in human knowledge".

At paragraph 39 Sir Robin Jacob recorded the conclusions of the EPO Opposition Division's problem-solution analysis (which requires an assessment of the closest prior art) and in doing so, emphasised particularly the final point as follows:

"In [Turi] the problem was neither mentioned nor even suggested and considering [Turi] as the closest prior art is merely the result of an ex-post facto analysis." (emphasis added by Sir Robin Jacob)

In our report on the first instance judgment in this case, we raised the questions as to whether a proper application of either of these approaches in full would have resulted in Birss J. coming to a different decision on obviousness. Bearing in mind his conclusion on the facts and their relative import

Comment

We believe that this is a very important judgment of the Court of Appeal, particularly for the pharmaceutical industry and all industries where empirical research forms the heart of the industry and forms the basis for many important advances in the art – and indeed in human knowledge. The first instance judgment in this case conjured up strong echoes from a past era – in which having a UK patent upheld as inventive in an empirical art was the exception to the rule. With 15 uses of the word "real" - whether to describe real problems, real organisations, real prejudices, real formulators, real world and ultimately a "real advance" - this Court of Appeal Judgment is firmly based in and recognises the importance of "reality" when assessing the validity of an invention.

Overall, the Court of Appeal's decision is therefore a positive re-affirmation that the "obvious to try" doctrine does not mean "obvious to include in an empirical research project". Rather, a patent's claim will only lack inventive step if it was obvious to try what is claimed with a reasonable prospect of success. This builds upon the guidance from Kitchin J in Generics v Lundbeck [2007] RPC 32 at [72]:

"The question of obviousness must be considered on the facts of each case. The court must consider the weight to be attached to any particular factor in the light of all the relevant circumstances. These may include such matters as the motive to find a solution to the problem the patent addresses, the number and extent of the possible avenues of research, the effort involved in pursuing them and the expectation of success."

And also upon the guidance of Lord Hoffmann in Conor v Angiotech [2007] RPC 32 at [42]:

"the notion of something being obvious to try was useful only in a case in which there was a fair expectation of success. How much of an expectation would be needed depended upon the particular facts of the case".

Sir Robin Jacob's judgment confirms that in an empirical field, despite the conduct of a broad test perhaps being an obvious and routine step to take, a patent will only be obvious if at the priority date there was a reasonably optimistic expectation that the particular claimed invention would work.

Finally, it is useful to see another citation of Jacob LJ's statement on the requisite degree of expectation of success, from the Court of Appeal in St Gobain, to remind ourselves that invention can of course lie in areas other than those " totally devoid of prospect". The sentence that Sir Robin Jacob left off that quote in his re-statement this time was that: "The "obvious to try" test really only works where it is more-or-less self-evident that what is being tested ought to work." That (perhaps) extreme level of "expectation" was subsequently tempered slightly in Kitchin LJ's judgment in Novartis v Generics [2012] EWCA Civ 1623) in which he said:

"What is a reasonable or fair expectation of success will again depend upon all the circumstances and will vary from case to case. Sometimes, as in Saint Gobain, it may be appropriate to consider whether it is more or less self-evident that what is being tested ought to work. So, as this court explained in that case, simply including something in a research project in the hope that something might turn up is unlikely to be enough. But I reject the submission that the court can only make a finding of obviousness where it is manifest that a test ought to work. That would be to impose a straightjacket upon the assessment of obviousness which is not warranted by the statutory test and would, for example, preclude a finding of obviousness in a case where the results of an entirely routine test are unpredictable."

However, where (as in this case) there are numerous potential avenues empirically to pursue, the "more-or-less self-evident" level of expectation may well be justified - to raise the particular solution out of the morass of background noise - before one can say it was "obvious".

Let's "keep it real"".

On Finding the Most Promising Springboard - T0698/10

The decision T0698/10 of one of the EPO's technical boards of appeal contains interesting notes on the problem of determining the closest prior art as a starting point for the problem-and-solution approach used for the assessment of inventive step.

Here is the analysis of the board (emphasis added by the board):

Determining the closest prior art

3. The first step of the problem and solution approach is to determine the closest prior art, i.e. the most promising starting point - or the most promising springboard to the invention - for the assessment of inventive step. The jurisprudence of the boards of appeal has established criteria for identifying the closest prior art, see CLBoA, section I.D.3, with an emphasis on the following two:
(a) As a first criterion, the closest prior art should be related to the claimed invention, in the sense that it should disclose subject-matter conceived for the same purpose or aiming at the same objective, corresponding to a similar use, or relating to the same or a similar technical problem or, at least to the same or a closely related technical field.
(b) As a second criterion, the closest prior art should disclose subject-matter having the greatest number of relevant technical features in common with the claimed invention, i.e. requiring the minimum of structural and functional modifications.

3.1 In the present case, the subject-matter of claim 1 of the main request concerns a video processing method for decoding a bitstream according to the AVS standard. The claimed method provides an improvement over a conventional AVS decoding in that it allows the decoding of bitstreams coded according to different versions of the AVS standard (see section 2 above).

3.2 D1 is an article describing the main technical features of the AVS standard for coding and decoding video signals. The AVS standard is described in the present application as the starting point for the invention (see paragraphs [0002] to [0006] of the application as filed). D1 thus belongs to the same technical field as the claimed invention, i.e. the coding and decoding of video signals according to the AVS standard. It also serves a similar purpose and implicitly or explicitly addresses similar or the same technical problems as the claimed invention, i.e. those solved by the use of the AVS standard, such as a highly efficient video coding/decoding and an optimisation between absolute coding performance and complexity of implementation (see the INTRODUCTION section on the first page of D1). Moreover, the video processing method disclosed in D1 has several technical features in common with the method of claim 1, these features being essentially implied by the reference to the AVS standard in claim 1.

3.3 The appellant disputed that D1 could be regarded as the closest prior art, because it did not disclose the problem arising from the existence of different versions of the AVS standard (see paragraph [0006] of the application as filed).

3.4 The board concurs with the appellant that D1 does not disclose this further problem, but disagrees that it should disqualify D1 as starting point for the assessment of inventive step. Indeed, the closest prior art need not disclose all the problems solved by the claimed invention, in particular it need not disclose the objective technical problem, which is only determined in the second step of the problem and solution approach based on the technical effect(s) provided by those features distinguishing the invention as claimed from the closest prior art.

3.5 In the present case, there is no other prior art on file which discloses the objective technical problem or which would qualify better than D1 as the closest prior art. During the oral proceedings, when asked by the board which prior art was the closest prior art if not D1, the appellant replied that there was none. The board cannot agree with this view. According to Article 56 EPC an invention is to be considered to involve an inventive step if, "having regard to the state of the art", it is not obvious to the skilled person. Hence, the assessment of inventive step has to be based on an evaluation of the invention in view of the prior art. The expression "closest prior art" also does not mean that it must be sufficiently close to the claimed invention on an absolute basis, but only that it must be relatively closer to the claimed invention than the other prior-art disclosures, i.e. it is selected as the most promising starting point - or the most promising springboard towards the invention.

3.6 The appellant further argued that, according to the established jurisprudence of the boards of appeal, it was essential that the (objective) technical problem be at least suggested in the closest prior art, in order to avoid an inadmissible ex post facto analysis. It referred to CLBoA, section I.D.6 and several decisions cited therein.

3.7 The board disagrees with the appellant's interpretation of the jurisprudence in section I.D.6 of the CLBoA. This section does not refer specifically to determining the closest prior art (dealt with in CLBoA, I.D.3), but generally to the interpretation of prior-art documents, which should not be influenced by the problem solved by the invention, where the problem is neither mentioned nor suggested in these documents.

When applied to D1, this jurisprudence means that the interpretation of D1 should not be influenced by a problem solved by the invention, but neither disclosed nor suggested by D1, which in the present case is a problem arising from the existence of different versions of the AVS standard (see point 3.3 supra). However, it does not mean, as argued by the appellant, that this problem should at least be suggested in D1 in order to avoid an inadmissible ex post facto analysis (see point 3.6 supra). The board's interpretation of D1 under point 3.2 supra is based on the disclosure of D1, without any reference to or influence by the above problem relating to different versions of the AVS standard.
Hence, the appellant's arguments under point 3.6 supra are not persuasive and the board's interpretation of D1 complies with the jurisprudence in CLBoA,
section I.D.6.

3.8 The appellant further submitted that the established jurisprudence of the boards of appeal required that the objective technical problem be related to the actual disclosure of the closest prior art. The appellant referred to CLBoA, I.D.3.3 and specifically to decisions T 835/00, T 686/91 and T 1898/07 cited therein.

3.9 The board is not convinced by these arguments for the following reasons.
According to the above three decisions, a prior-art disclosure not mentioning a technical problem which is at least related to that derivable from the patent specification under examination does not normally qualify as the closest prior art, however many technical features it may have in common with the claimed subject-matter (see T 686/91, point 4 of the Reasons, T 835/00, point 4.2 of the Reasons, and T 1898/07, point 45 of the Reasons).

In each of decisions T 686/91 (see point 4 of the Reasons), T 835/00 (see section 4.4 of the Reasons) and T 1898/07 (see points 46 to 48 of the Reasons), the board considered that the prior-art document which had the greatest number of features in common with the claimed subject-matter solved a technical problem unrelated to the problem solved by the claimed invention. For this reason, the board concluded in each of these decisions that the closest prior art, i.e. the most promising springboard towards the invention, was another prior-art document which had fewer features in common with the claimed subject-matter but solved a problem more closely related to that of the claimed invention.

In other words, in each of these three decisions the board considered that in those particular cases, although the afore-mentioned second criterion (greatest number of features in common) was met, the afore-mentioned first criterion was clearly not met, because the solved problem was unrelated to that of the invention. Hence, the board considered that, overall, that prior art was less suitable as closest prior art for assessing inventive step than other available prior art.

3.10 In the present appeal case, the situation is different from that of decisions T 835/00, T 686/91 and T 1898/07 in several aspects:
(a) D1 does not solve an unrelated problem. As explained above, it relates to the same technical field as the present application, which implies that it addresses problems related to video encoding using the AVS standard. Hence, there is no problem solved by D1 which is unrelated to a problem solved by the claimed invention.
(b) The application as filed describes the AVS standard as the starting point of the invention. D1 is essentially a prior-art document providing an overview of the AVS standard. D1 is thus essentially the same prior art as the one used by the appellant (and presumably also by the inventors) as the starting point for the claimed invention. It is thus surprising that the appellant argued that document D1 was not a suitable starting point for the assessment of inventive step.
(c) The reasoning in decisions T 835/00, T 686/91 and T 1898/07 is based on the underlying principle that the closest prior art should be the most promising springboard towards the invention (see T 835/00, point 4.1 of the Reasons). This is clearly the case for D1. Moreover, the appellant could not point to more suitable prior art; instead, it merely stated that in the present case there was no closest prior art.

Hence, the board is not convinced by the appellant's arguments that only with hindsight can D1 be regarded as the closest prior art.

3.11 In view of the above, the board considers that D1 meets the requirements established by the jurisprudence for being regarded as the closest prior art.

Note for the practice: If you argue that a certain document is not the closest prior art, be sure to know which one you think is closer. 

Point 3.4 hints to a discussion which is sometimes more problematic: Inventions sometimes solve a whole plethora problems (to render the apparatus cheaper, better, fancier or simply more beautiful) and these may depend on the starting point chosen and vice versa.  The choice of the "subjective" problem is decisive for the "objective technical" problem and plays an important role not only in relation to inventive step (Art. 56 EPC) but also in relation to infringement by equivalent means.

Posted by Michael Thesen

Inventive step: is 'long felt want' still worth arguing?

VPG Systems UK Ltd v Air-Weigh Europe Ltd [2015] EWHC 1862 (IPEC), is a tidy little decision of Judge Richard Hacon, sitting in the Intellectual Property Enterprise Court, England and Wales, on 1 July, where the court found that VPG's patent for a device for indicating to the driver of a commercial vehicle that load limits for that vehicle had been reached or exceeded was invalid as lacking an inventive step [this is the second blogpost on issues arising between these parties: here's the first].

Of particular interest to this blogger is the judge's comment at [66]:

"I would only add this. No argument of long felt want was run by VPG. Superficially one might have expected an argument of that kind in these proceedings. The evidence from the experts suggested that this was a field in which the performance of inclinometers and accelerometers was advancing at quite a rapid rate in the period leading up to the Patent's priority date. Had long felt want been run, it is possible that it was around 2006 when such advances made a system of the type claimed in the Patent commercially attractive. As it is, long felt want was not enrolled to assist VPG's case so the change in performance of inclinometers is neutral".

'Long felt want' is an argument that had its heyday in the previous century, when a patent's inventive step (a.k.a. lack of obviousness) was something that was more often than not established by the application of rules of thumb which established that an invention was not obvious if, e.g., there had long been felt to be a want of it but that want had not been hitherto satisfied, or that it was obvious if it consisted of the application of a known principle for a known purpose or was reasonable for the person skilled in the art to try it. However, after (i) the Court of Appeal in Windsurfing International Inc v Tabur Marine (Great Britain) Ltd [1985] RPC 59 created a formula that looked specifically at the difference between the alleged patentable invention and the prior art and (ii) advances in computer storage, retrieval and search made the prior art far more accessible than had previously been the case, reliance on rules of thumb -- including 'long felt want' -- appears to have declined.

This is very much a personal impression, but this blogger feels that the very fact that a party raises 'long felt want' as an argument that its patent is not obvious is a flag being waved in the direction of the court that the argument in favour of there being an inventive step is a really weak one. A search of patent cases on the BAILII database suggests that the words 'long felt want' have scarcely been uttered by any British judge over the past five years.

Explicilty mentioning the effect won't help

The Decision Human papillomavirus vaccines/GLAXOSMITHKLINE T 1493/09 available here deals with a vaccine composition having various complicated names. No surprise so far.

The main request was rejected as being obvious over the art and the auxiliary request. The obviousness of the auxiliary request is discussed in points 20 - 22 as below (emphasis added):

Claim 1 of [the auxiliary request] differed from claim 1 of the main request in that it is directed to the second medical use of the vaccine composition, i.e. it is directed to a vaccine composition for use in the prevention or treatment of a disorder related to HPV infection, as opposed to the product as such. The appellant stated that this claim type set a higher bar with respect to evidence on the efficacy as a vaccine, in particular requiring evidence of effective protection in humans.

Claim 1 of auxiliary request 1 includes the therapeutic effect ("prevention or treatment of a disorder related to HPV infection") as an explicit feature, while claim 1 of the main request does not. In other words, claim 1 of auxiliary request 1 is directed to a “vaccine composition” characterised in that it comprises VLPs containing HPV-derived proteins which is capable of generating a protective immune response for each HPV L1 protein present in the VLPs in the composition. In the board’s view, the wording of claim 1 of the main request already implies that the claimed composition is an effective vaccine for the treatment of HPV-related disorders. In fact, this effect (the same as the one as explicitly recited in claim 1 of the auxiliary request) was already taken into account by the board when evaluating the inventive step of the subject-matter of claim 1 of the main request (see in particular points 4 to 10 above). Hence, the board considers that the assessment of inventive step for the subject-matter of claim 1 of the main request according to the problem and solution approach set out at point 2 to 19 above
applies to the subject-matter of claim 1 of the auxiliary request without any change in the reasoning.  

The subject-matter of claim 1 of auxiliary request 1 therefore lacks an inventive step for the same reasons as the subject-matter of claim 1 of the main request. The requirements of Article 56 EPC are not fulfilled.

In other words, mentioning the therapeutic effect makes life more complicated in that evidence for its existence may be required but did not help in this case.

Pointers to the Dead End Street

One thing that makes our life difficult is that innovations tend to make things better – but not in every respect. Cost-saving improvements might be less robust and “cool” designs might be less prestigious, not to speak of the advantages and drawbacks of atomic energy or genetic engineering.

This ambivalent nature of innovations might be one of the reasons why the requirement that the invention is a “technical progress” has been banned from the list of requirements to be fulfilled by patentable inventions in Germany as of 1978.

Ever since, courts and offices struggle with the assessment of inventiveness for alleged inventions making things – at least in important aspects - worse than before. While the case law of the Technical Boards of Appeal still provides a special treatment for so-called “disadvantageous modifications” (see e.g. T119/89) in that they are basically non-inventive right away as long as the disadvantages are foreseeable and not outbalanced by surprising advantages, the BGH in Germany has banned any such judgmental considerations from the assessment of inventive step.

Rather, the “incentive” (Anregung) for the skilled person to modify the prior art has been implemented in the last years as a very strict requirement for the assessment of obviousness (see e.g. here and here).

In the decision “Kniehebelklemmvorrichtung”, the BGH applies this approach to a modification which ultimately turned out to have major drawbacks, the drawbacks being – according to the patentee - an incentive for the skilled person to return to the prior art or to make further modifications rather than adhering to the solution according to the patent.

The patentee’s argument that adhering to the disadvantageous solution of the patent would therefore be non-obvious was rejected. The BGH emphasizes that the decisive question is whether or not there was an incentive or pointer to make the modification.

To put it differently: As long as there is a pointer at the beginning of the street, it is obvious to follow it – even if it ultimately turns out to be a dead-end street.

BGH on Using Cancerogenic Substances

Incentive to use?

In the decision “Glasfasern”, the German Bundesgerichtshof (BGH) had to rule in the novelty and inventivess of a “use” claim. The patent had been granted on the idea of using a particular kind of glass fibre material as glass fibre “not having cancerogenic potential”.

The glass fibre as such was (besides of some very minor differences not giving rise to an inventive step) known from at least one document in the prior art. In the same document, it was noted that the glass fibre would presumably have cancerogenic properties (in particular when  minute fragments accumulate in the lung of workers using the material for building insulation) and that two independent institutes had been entrusted to carry out an investigation on this issue.

According to the established case-law in Germany, the anticipation of “use” claims does not require evidence that the “use” has actually taken place. Rather, it is sufficient if the product or substance has been evidently prepared (“sinnfällig hergereichtet”) for such a use, e.g. by using a design adapted to that use or by supplementing the product or substance with a user manual or package leaflet disclosing the possible use.

In the case at issue, the presumption of cancerogenic properties was not considered sufficient to establish a lack of novelty.

Further, this presumption together with the information that studies in this regard had already been commissioned did not constitute an incentive for the skilled person to carry out these (expensive and complex) studies by himself.

An interesting point in this decision is that the “use” was not limited to a particular technical application of the glass fibre such as building insulation but rather covered all applications where cancerogenic potential was undesired (difficult to imaging where this is not the case). The discovery of a yet unknown property (here: lack of cancerogenic potential) of a known substance gives the discoverer the exclusive right to use the substance in applications where this property is relevant.

Some Need a Slight Nudge, Some Need a Kick in the Trousers

One of the more problematic issues when discussing the inventive step is the “incentive” or “prompting” needed by the skilled person to combine particular pieces of prior art. Both EPO examiners and opponents sometimes have a really hard job to find such an incentive and often end up with citing the unlucky EPO decision T 1126/09 out of its context, according to which this prompting “need not be found in the cited documents but may result from the inventor’s fundamental endeavour to simplify the existing method/device“.

The German supreme court BGH has now found in the decision X ZB 6/10 “Installiereinrichtung II” that it depends on the circumstances how intense this prompting has to be. According to the judgement of the BGH, the prompting need not be explicit but may also be found in these factual circumstances:

The headnote (in a rough translation) reads:

 “The extend and the degree of concreteness of promptings in the prior art needed by the skilled person in order to further develop a known solution in a particular direction is a question which must be answered on a case-by-case basis requiring an overall consideration of all relevant elements of the factual circumstances. However, not only explicit textual indications to the skilled person are relevant. Rather, the characteristics of the technical field under consideration, in particular concerning the education of the skilled persons, the standard approach for developing technological innovations in the field, technical requirements resulting from the construction or from the application of the subject-matter concerned as well as non-technical requirements may play a role.”

Inventive step: another nuance

In Teva UK Ltd v Merck & Co, Inc [2009] EWHC 2952 (Pat), 20 November 2009, Mr Justice Kitchin had to consider Teva's claims that (i) a Merck patent for an ophthalmic preparation for the treatment of glaucoma was invalid for obviousness in the light of a single item of prior art and common general knowledge and that (ii) the same patent was invalid for added matter and insufficiency. On the other side he had to consider Merck's uncondition application to amend the patent and Teva's response that the amendment was not allowable and that, even if it were, it still wouldn't save the patent. Holding the patent invalid for want of inventive step, the judge did not need to review the issue of insufficiency.

The judgment appears relatively uneventful in terms of its legal content, though there is another little gentle nuancing of the way a court should approach inventive step. After reciting the usual authorities, the judge states (at para.98):

"I think that Mr Birss [for Merck] is right that one must proceed with caution when faced with an obviousness attack based on a suggestion that the skilled person would embark on a research program in the course of which he would discover that a product or compound was effective. This is particularly so where the technical effect is one which is newly discovered, or impossible or very hard to predict. That is because the expectation of success may be zero, or inadequate to drive the research forward. In the end it will all depend on weighing the various factors as they appear from the evidence in the case. That is what I have endeavoured to do in the present case".

This approach appears both realistic and fair: the only problem is deciding when the conditions for its application are present.