NATIONAL LAW UNIVERSITY ODISHA

INTELLECTUAL PROPERTY RIGHTS-I

Test of Inventiveness in European Patent Office

Submitted by:
Aishwarya Singh[2011/BA LLB/005]
Prakhar Raja Bishnoi [2011/BA LLB/38]

Table of Contents

Index of Authorities....................................................................................................................3
Research Paper...........................................................................................................................5
Evolution of Patent Law in Europe........................................................................................5
Formation of European Patent Office.......................................................................5
An Invention: Definition and Scope..........................................................................6
Problem-Solution Approach.........................................................................................9
Closest Prior Art..............................................................................................................10
Objective Technical Problem............................................................................................11
Person Skilled In the Art..................................................................................................11
Windsurfing test- A different approach in United Kingdom.............................................12
Problem-Solution Approach: Is it Sufficient to judge inventiveness?.........13
Conclusion................................................................................................................................16

2|Page

Index of Authorities
Cases
Actavis UK Ltd v Novartis AG................................................................................................16
DSM NVs Patent.....................................................................................................................12
G 1/95 Fresh Grounds of Opposition/ DE LA Rue....................................................................6
T 106/84, Packing Machine/Michaelson.................................................................................13
T 191/82, Baled Waste Paper Product/Fibre Chem.............................................................14
T 1/80 Carbonless Copying Paper/Bayer...................................................................................9
T 119/82, Deodorant Products/Unilever.................................................................................15
T 15/81 Testing Device/KRAFTWERK..................................................................................10
T 154/04 Estimating Sales Activity/ DUNS LICENSING ASSOCIATES................................6
T 181/82 Spiro Compounds/ CIBA GEIGY..............................................................................7
T 26/81, Containers/ICI..............................................................................................................9
T 26/81, Containers/Imperial Chemical Industries.................................................................15
T 271/84, Air Products/Removal of H2S and COS..................................................................14
T 38/84 , Oxidation of Toluenel Stamicarbon.........................................................................14
T 39/93 Polymer Powders/ COMVIK......................................................................................10
T 441/93 Cloning in Kluyveromyces/GIST BROCADES.........................................................8
T 5/81 Hollow thermoplastics/ SOLVAY.................................................................................10
T 564/89 Photosensitive Polymer Composition/ TORAY.........................................................9
T 677/91 Ion Traps/ FINNIGAN..............................................................................................10
T 694/92 Modifying Plant Cells/MYCOGEN.........................................................................10
T 890/02 Chemeric gene............................................................................................................7
T1/80, Carbonless Copying Paper..............................................................................................9
T111/00 specifically for DNA sequences...................................................................................9
T13/84(SPERRY/Reformulation of the problem)....................................................................11
T20/81, ArylozyBenzaldyhyes...................................................................................................9
T226/88 Hoechst AG [1988]......................................................................................................9
T24/81 (BASF/Metal refining).................................................................................................11
T939/92. Triazoles......................................................................................................................9
Windsurfing International Inc. v Tabur Marine.......................................................................12

3|Page

Statutes
European Patent Convention......................................................................................................6
TRIPS Agreement......................................................................................................................5
Articles
FRIEDRICH7& KARL BEIER, THE EUROPEAN PATENT SYSTEM..................................................8
G. PATERSON, A CONCISE GUIDE TO EUROPEAN PATENTS: LAW AND PRACTICE.....................10
JOHN RICHARDS, 10 YEARS

OF

SUBSTANTIVE LAW DEVELOPMENT

IN

EUROPEAN PATENT

OFFICE..................................................................................................................................13
MELANIE J. HOWLETT & ANDREW F. CHRISTIE, AN ANALYSIS OF
EUROPEAN, JAPANESE

AND

UNITED STATES PATENT OFFICES

THE
TO

APPROACH OF THE

PATENTING PARTIAL

DNA SEQUENCES...................................................................................................................5
ROBERT P MERGES, PATENT LAW AND PROPERTY: CASES AND MATERIALS............................5
WORLD INTELLECTUAL PROPERTY PCT APPLICANTS GUIDE....................................................5
ZORINA KHAN, INTELLECTUAL PROPERTY

AND

ECONOMIC DEVELOPMENT: LESSONS

FROM

AMERICAN AND EUROPEAN HISTORY....................................................................................5

Books
FYSH J., THE MODERN LAW OF PATENTS ...................................................................................7
JUDGE FYSH, THE MODERN LAW OF PATENTS...........................................................................8
STANLEY, THE FUTURE OF INVENTIVE STEP IN PATENT LAW,................................................18

4|Page

Research Paper
EVOLUTION OF PATENT LAW IN EUROPE
After enactment of TRIPS agreement for a product to be granted patent each country has to
apply the same criteria-novelty, non-obviousness and utility-to determine whether an
invention is eligible to be protected by a patent. 1 The present state of play as to universal
patenting is that a designer who needs legitimate security in diverse nations should seek a
patent in every ward. Once a patent application has been lodged at the relevant patent
offices, each office undertakes its own examination of the application. 2 Although similar
patentability thresholds apply, each office conducts its own search for prior art and uses
different tests to examine the size of the inventive step involved in the invention. 3 Thus,
it is possible that a single invention that results in patent applications in multiple
jurisdictions will be granted a patent by one office and rejected by others.
The patent system has undergone substantial changes since its inception. 4 While in its
origins, society's benefit was regarded as the introduction of a new art or technology; by
the late eighteenth century the economic role of patents shifted the emphasis to the
dissemination of new and useful information. 5 During the last century, a new shift in

1 TRIPS Agreement, Article 27.

2 2 WORLD INTELLECTUAL PROPERTY PCT APPLICANTS GUIDE,
http://www.wipo.int/pct/guide/en/gdvol2/pdf/gdvol2.pdf

[hereinafter

17

(2004),

PCT APPLICANT's

GUIDE].
3 MELANIE J. HOWLETT & ANDREW F. CHRISTIE, AN ANALYSIS
THE

EUROPEAN, JAPANESE

AND

UNITED STATES PATENT OFFICES

OF THE

TO

APPROACH

OF

PATENTING PARTIAL

DNA SEQUENCES (ESTS), 34 INT'L REV. INDUS. PROP. & COPYRIGHT L. (2003)
581
4 ZORINA KHAN, INTELLECTUAL PROPERTY

AND

ECONOMIC DEVELOPMENT: LESSONS

FROM

AMERICAN AND EUROPEAN HISTORY , Available at: iprcommission.org

5 ROBERT P MERGES, PATENT LAW AND PROPERTY: CASES AND MATERIALS 6 (1992)
5|Page

emphasis took place towards a system mainly concerned with the encouragement of the
investment required to produce and exploit inventions.
FORMATION

OF

EUROPEAN PATENT OFFICE

The international patent body that has undoubtedly played the most substantive and sustained
role to date is the European Patent Office (EPO).6 The European Patent Convention,
according to which the EPO was founded, provides a single patent grant procedure, but not
yet a single patent. After grant, the European patent becomes a number (bundle) of national
patents. EPO patent grants are issued for inventions that are novel, mark an inventive step,
are commercially applicable, and are not excluded from patentability for other reasons.7
The idea of developing a harmonized or unified patent system in Europe originated as
early as 1949 with the Council of Europe. The underlying rationale was the general wish
to contribute to harmonizing national law, to better understanding and improved
relations between the peoples of Europe, as well as the specific understanding that the
fragmented national approach to protect technical inventions was contrary to good sense
and rational economic behaviour.
The Convention establishes an European patent organization which has its seat in
Munich and consists of the European Patent Office (EPO) and the Administrative
Council. The EPO is an international administrative agency with a staff whose
members come from all of the contracting states. The convention requires a patent to be
centrally applicable. Part II of the Munich Convention contains the provisions of
substantive patent law of which the chapter on patentability 8 is the most important one.
Under Article 52(1), European patents shall be granted for inventions which are new,
involve an inventive step, and are susceptible of industrial applications. Since the basic
provisions on patentability mention only these four criteria, namely: invention, novelty,
inventive step or non-obviousness, and industrial applicability, and are to be understood as
6 The World Intellectual Property Organisation, which traces its origin back as far as the Paris Conventionof
1883, allows applicants to le applications in multiple countries under the Patent Cooperation Treaty.

7 Article 52 European Patent Convention. [Hereinafter, EPC]

8 Articles 52-57, EPC
6|Page

containing an exhaustive enumeration, no other criteria of patentability can be applied to

European patent applications.
AN INVENTION: DEFINITION

AND

SCOPE

The term invention for many years was not particularly defined. It was only later that the
definition treated as an indication of the area of patentability, rather than a statutory text to be
interpreted in the usual way,9 and the definition would have been retained but for
implementation of EPC. Whether something is invention is separate is something which is
novel, involves an inventive step or is industrially applicable. 10 An invention was not
originally defined in the convention because of the lack of any meaningful agreement and it
still lacks a clear definition in the case of law.11 The requirement for an inventive step is the
most central of patent law. Article 56 EPC provides that, having regard to the state of the art,
the invention must not be obvious to a person skilled in the art.
An invention must be not only be novel but must also be shown that it involves an inventive
step, put another way invention must not be obvious to a person skilled in the art who was
aware of the state of art. There has long been acknowledged to be difficulty in determining,
where an invention is sufficiently inventive and for many years applications were not
examined by the patent office on the grounds of obviousness, the definition of inventive
step is found in art. 56 of the EPC:
Article 56: An invention shall be considered as involving an inventive step if, having regard
to the state of art, it is not obvious to the person skilled in the art...
This requirement is not simply showing technical progress has been made and to the
demonstration of such progress is not enough on its own to show requisite inventiveness. 12
The test that something involves an inventive step should be construed objectively , it doesnt
9 FYSH J., THE MODERN LAW OF PATENTS 2nd Ed. 2010 p. 16
10 G 1/95 Fresh Grounds of Opposition/ DE LA Rue [1996] OJ EPO 615
11 T 154/04 Estimating Sales Activity/ DUNS LICENSING ASSOCIATES [2008] OJ EPO
46
12 T 181/82 Spiro Compounds/ CIBA GEIGY [1984] OJ EPO 401
7|Page

matter who came up with the invention and it doesnt whether it was after hundreds of hours
of research and trials or if it was conceived in moments.
In Chimeric Gene,13 the board summarised what amounts to common general knowledge, a
person skilled in art has to be:
(a) the skills of such is a person is not only inclusive of knowledge in a particular
field but also, his ability to look up in Encyclopaedias and handbooks etc.
(b) it cannot be expected that in order to indentify this common general knowledge
the skilled person will carry out any sort of comprehensive search of the literature
covering virtually the whole state of art.
(c) the information found must be unambiguous and usable in the direct and
straightforward manner without doubts.
It follows from the foregoing that for each case the common general knowledge of the skilled
person working in a particular technical field must be decided on its own mertis, based on the
facts and evidence of that particular case. There exists no doubt with respect to the fact that if
a person skilled in a particular, he may sought assistance from people skilled in the closest
prior art as well. This should not extend beyond the routine skill that would be exercised and
should not involve any detailed research.14 Indeed, if the answer appears to lie in another
technical field it is the practitioner in that field who should be skilled person for the purposes
of the assessment of inventive step.15
It is, therefore, no great loss if European patent law relinquishes the requirement of
technical progress as an independent examination criterion and proceeds from the
general presumption that an invention which is susceptible of industrial application and
which is not obvious to the average man skilled in the art constitutes an enrichment
of technology and thus contributes to technical progress, without the applicant's having

13 T 890/02 Chemeric gene [2003] OJ EPO 34

14 T 441/93 Cloning in Kluyveromyces/GIST BROCADES [1993] OJ EPO 23
15 JUDGE FYSH, THE MODERN LAW OF PATENTS 2nd Ed. 2011, 66
8|Page

to prove in each case that the invention is more advantageous than all other known
technical solutions.
The European novelty examination is based on the strictest world-wide novelty
standard. According to article 54(3), the content of prior applications, which on the
priority date of a later publication have not yet been published, will also belong to the state
of the art. Such a rule was necessary in order to prevent double patenting. But how this
objective was to be accomplished has been extraordinarily controversial in the last
twenty years.16 It is not the activity of inventing which is decisive to the concept, but
rather the product of that activity, the invention, and its distance from the state of the
art. It is nevertheless a welcome development that this judge-made condition of
patentability, whose practical importance is much greater than that of novelty, is now
firmly anchored in the European patent law. According to the legal definition in article
56, an invention shall be considered to involve an inventive step if, having regard to
the state of the art, it is not obvious to a person skilled in the art. This definition
corresponds to the definitions developed by United States and German courts for nonobviousness.17 It is to be hoped that this criterion, upon which the quality of future
European patent examination will largely depend, will find reasonable interpretation by
the European Patent Office and the national courts.

PROBLEM-SOLUTION APPROACH
The EPO examines whether an invention involves an inventive stop using problem and
solution approach.18 The normative justification for this approach is that the description must
disclose the invention so as to identify the technical problem and its solution 19 and this

16 FRIEDRICH7& KARL BEIER, THE EUROPEAN PATENT SYSTEM, 14 Vand. J. Transnat'l L. 1

1981 23
17 Id. at 28
18 T 1/80 Carbonless Copying Paper/Bayer [1981] OJ EPO 206
9|Page

requirement is satisfied by adopting this approach in assessing inventive step 20 and preventing
hindsight creeping into the assessment.21
One noticeable result of the problem and solution approach is that if a new product shows an
unexpected or surprising effect (judged with reference to the state of the art), then it will be
inventive because the new effect is deemed to have been the goal of the research. The
notional worker would be deemed to have tried to achieve this effect and as it is not part of
the state of the art and not obvious (as it is unexpected), he would fail. 22 Structural originality
is not taken into account when assessing inventiveness. 23 Therefore, when a group of
compounds fail to have any specific technical application there is no technical achievement
and the problem to be solved is deemed to be the provision of further variants which in the
absence of a technical motivation for doing so is obvious.24
In order to assess inventiveness, the EPO uses the problem and solution approach which was
developed through case law.25 The Triazole case26 states the workings of this approach
comprehensively:
Firstly, one must objectively assess the technical results achieved by the claimed
subject-matter, compared with the results obtained according to the state of the art.
19 EPC, r 42(1)(c)
20 T 26/81, Containers/ICI [1982] OJ EPO 211
21 T 564/89 Photosensitive Polymer Composition/ TORAY (unpublished)
22 T226/88 Hoechst AG [1988] OJ EPO 11
23 See T22/82 and T111/00 specifically for DNA sequences (unlike in the USA, where under
Re Deuel 51 F.3d 1552 (Fed. Cir. 1995),
24 T939/92. Triazoles [1992] OJ EPO 206
25 T20/81, ArylozyBenzaldyhyes and T1/80, Carbonless Copying Paper [1981] OJ EPO 206
26 T939/92. Triazoles [1992] OJ EPO 206
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Secondly, one assumes that the inventor in fact did try to achieve this result. This
assumption is used as a basis from which to define the technical problem to solve.
Thirdly, one must determine whether, for a skilled but unimaginative worker, it would
have been obvious to solve the technical problems and achieve the result.
In theory the test for inventive step should be the same in examination and opposition
proceeding at the EPO as it is in revocation proceedings before national courts. 27 The courts
basically test through the eyes of a notional person skilled in the art, 28 who is expert in the
technical field, but possesses no inventive capacity29 and will not undertake any creative
thinking. The skilled person has only average skill in the particular technical area. In relation
to inventive stop the skilled person knows only the prior art, but in relation to novelty the
skilled person knows the prior art and the disclosed invention. 30 In any field, the skilled
person is constantly preoccupied to eliminate deficiencies and achieve improvements. 31 The
skilled person can consult other skilled person to ask questions or the notional skilled person
may actually comprise a team of skilled persons with different skills.
The following approach shows two distinct features. First, the evaluation of inventiveness is
objective and secondly, it is a technical assessment of the inventiveness of the advance made
from the closest prior art to the claimed invention. The latter characteristic means that
circumstantial evidence like commercial success or failure of others to reach the invention,
plays a less significant role. These distinct characteristics will come apparent during the
following analysis of the constituents of the problem and solution approach.32
27 T 677/91 Ion Traps/ FINNIGAN [1997] EPOR 480
28 T 5/81 Hollow thermoplastics/ SOLVAY [1982] OJ EPO 249
29 T 39/93 Polymer Powders/ COMVIK [2003] OJ EPO 352
30 T 694/92 Modifying Plant Cells/MYCOGEN [1997] OJ EPO 408
31 T 15/81 Testing Device/KRAFTWERK [1982] OJ EPO 2
32 G. PATERSON, A CONCISE

GUIDE TO

EUROPEAN PATENTS: LAW AND

PRACTICE ,

Sweet &

Maxwell,1995, at 150-151
11 | P a g e

Additional cases have explained this test clarified as being distinct from the hope of
succeeding. For an inventive step to be denied, it must be shown that the skilled worker
would reasonably predict at the outset that he would be successful, not that he hoped that he
would.
Closest Prior Art
The first step of the problem solution approach consists of the assessment that what was the
starting point for the invention and what prior art was closest to the claimed invention, The
EPO33 declared that the most promising springboard towards the invention, which was
available to the skilled man, must be used.
It should be emphasised at this point that although obviousness in the EPO is judged in the
light of the state of the art, which consists of all knowledge available to the public, particular
attention is given to that prior art which differs the least from the claimed invention, that is
the closest prior art. EPOs approach to the concept of the state of the art means that the
art may be in a parallel field to that of the invention. The skilled man is thus expected to be
aware of the developments in neighbouring arts. The EPO declared34 that it was reasonable to
expect a person skilled in the art to look for suitable parallels in neighbouring fields if it was
needed. It was further explained that determination of that issue depended on whether the two
fields were so closely related that the skilled man seeking solution to a given problem would
naturally take into account developments in the neighbouring field
Objective Technical Problem
After assessing the closest art, next step is to determine the technical problem which the
invention claims to addresses or solves. The problem is formulated from the view point of the
closest prior art and not the invention. The step also includes the determining the
characteristics which distinguish the subject matter from the prior art and determining the
technical effect of the distinguished feature.
When a European patent application is filed, the invention is often described and claimed by
referring to the prior art known to the inventor at the time the invention was made. In the
course of examination and opposition proceedings more relevant prior art frequently presents
33 (1986)10 E.I.P.R 293. The problem and solution approach to the inventive step
34 1 [1986] E.P.O.R 117.
12 | P a g e

itself. This means that the problem, which the inventor considers himself to have solved, may
not be the same as the objective problem, which is formulated by following the problem and
solution approach35.
Person Skilled In the Art
The final step of the problem solution approach is to judge that whether the invention
involves inventive step or not and it is done by the virtue of the assessment made by the
person who is skilled in the art. If the skilled person would have been prompted to modify the
closest prior art in such a way as to arrive at something falling within the terms of the claims,
then the invention does not involve an inventive step.
It is normally regarded as part of the skill of the skilled man, to seek and recognise technical
developments, which can be derived from simple combinations of documents. In
BASF/Metal refining case36 it was thus established that a process, which has been developed
as a result of a need, does not involve an inventive step if the need could have been readily
met by an obvious combination of teachings from the state of the art.
Windsurfing test- A different approach in United Kingdom
In Windsurfing International Inc. v Tabur Marine (Great Britain) Ltd 37 the Court of Appeal
held that the question of obviousness has to be answered, not by looking with the benefit of
hindsight at what is known now and what was known at the priority date and asking whether
the former flows naturally and obviously from the latter, but by hypothesizing what would
have been obvious at the priority date to a person skilled in the art to which the patent in suit
relates.
Thus the court formulated a four-step approach to judging obviousness:
(1) Identify the claimed inventive concept.

35 T13/84(SPERRY/Reformulation of the problem) [1986] E.P.O.R 289

36 T24/81 (BASF/Metal refining) [1979-85] E.P.O.R B:354
37 Windsurfing International Inc. v Tabur Marine (Great Britain) Ltd, [1985] RPC 59,
13 | P a g e

(2) Assume the mantle of the normally skilled but unimaginative addressee in the art at the
priority date and to impute to him what was, at that date, common general knowledge of the
art in question.
(3) Identify what, if any, differences exist between the matter cited as being known or used
and the alleged invention.
(4) Decide, without any knowledge of the alleged invention, whether these differences
constitute steps which would have been obvious to the skilled man or whether they require
any degree of invention.
The first three steps of the Windsurfing test are preliminary steps to put one in the proper
frame of mind to answer the question posed in the fourth step 38; and the final step of the
Windsurfing test can be seen as a restatement of the statutory test for inventive step as to is
the invention obvious or not

PROBLEM-SOLUTION APPROACH: IS

IT

SUFFICIENT

TO JUDGE INVENTIVENESS?

Prior to the European patent Convention coming into effect, considerable misgivings
were expressed as the standard by which obviousness would be judged. The
Convention itself states simply that for something to be patentable it must involve an
inventive step and that an invention shall be considered to have an inventive step if it
is not obvious to one skilled in the art. 39 A hint of what was to come did, however,
lay unrecognized at the time in Rule 27 (1) (d) of the Implementing Regulations that
stated that the description of such an invention shall in its application for claims disclose the
invention in such terms that the technical problem to which it addresses and its solution can
be understood. The Problem-Solution test involves the following steps:
i) The formulation of an idea or of a problem to be solved (the solution being
obvious once the problem is clearly stated).

38 DSM NVs Patent [2001] RPC 35

39 European Patent Convention Article 53(1) when read in conjunction with Article 56
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ii) The devising of a solution to a known problem.

iii) The arrival at an insight into the cause of an observed phenomenon (the
practical use of this phenomenon then being obvious).40
There always exists a fear that such an approach might lead to findings that simple solutions
were all obvious and this fear turned into a reality and was alleviated by the decision in
Packing Machine/Michaelson41, a case involving the use of a well known element (already in
public domain) for some new purpose. The Board after considering various facts and issues
stated:
The yardstick for measuring the inventive step applied to such uses must go
beyond the mere appreciation of such different use. Therefore, the Board invited
the appellant to put forward evidence why a specialist having knowledge of
electrical heating equipment, who is the person skilled in the art to be called
upon to solve the problem at hand, would not think of replacing the
conventional elements by (the claimed) elements in order to avoid the
recognized shortcomings,

even

though

he was

aware of certain

desirable

characteristics of the claimed evidence and that no insurmountable difficulties

would attend their use.
In these circumstances, the Board came to the necessary conclusion that such and invention
was pretty obvious and it was

necessary to

consider

whether there

are any valid

secondary considerations tending to displace this prima facie assessment. As secondary

considerations, the applicant advanced the following:
(1) there must be multiple attempts over a period of years to the same problem.42
(2) there was departure from the general tendencies and the known elements were
being used to approach the problem from a different direction.
40 JOHN RICHARDS, 10 YEARS

OF

SUBSTANTIVE LAW DEVELOPMENT

IN

EUROPEAN PATENT

OFFICE, 71 J. Pat. & Trademark Off. Soc'y 1989 320 at 321

41 T 106/84, Packing Machine/Michaelson [1985] EPOJ, p. 132.
42 T 271/84, Air Products/Removal of H2S and COS [1987] EPOR 23.
15 | P a g e

(3) the market should be ready to accept the new product on the grounds that it was
taken by surprise and an important advantage has been received in using the claimed
invention.43
The Board also concluded that the appellant had been successful in achieving simplicity
without the great sacrifice to quality rather lesser inventive accomplishment rather than lesser
inventive accomplishment. In fact, experiences are witness to this fact it is by far much
difficult to develop a solution which is simple than a complicated one. This is even more so
when a superior result ought to be obtained.44 Now the problem which needs to be paid heed
to is that when an application for revocation of such patent is made and when analysis is
made the issue with hindsight arises and it turns out that such solution was simple enough and
that anyone could have easily thought of it. Indeed, this becomes the foundation of many
decisions destroying applications or patents for lack of inventive step.
In other decisions, the Boards have also cautioned against putting too much weight on
commercial success unless this can unequivocally be tied to some technical effect
rather than extraneous factors.45 The need for there to be "something extra" to
establish patentability in cases where one is taking a known element and using it to
perform its known purpose in a new situation was emphasized by the Chemical Appeal
Board in Deodorant Products/Unilever46 where it was pointed out that in the absence of
prejudice or a surprising result it was obvious to take a compound known for a
particular purpose in one type of composition and use it for the same purpose in a
different composition.

43 T 38/84 , Oxidation of Toluenel Stamicarbon [1984] EPOJ 368

44 JOHN RICHARDS, 10 YEARS

OF

SUBSTANTIVE LAW DEVELOPMENT

IN

EUROPEAN PATENT

OFFICE, 71 J. Pat. & Trademark Off. Soc'y 1989 320 at 325

45 T 191/82, Baled Waste Paper Product/Fibre Chem [1986] 2 EPOR 88.
46 T 119/82, Deodorant Products/Unilever [1984] EPOJ p. 217
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Further, in the case of Containers/Imperial Chemical Industries47, the Examining Division

had rejected the application on the ground that the problem to be solved by the
inventor had not been set out in the application, this was so because of the Implementing
Regulations of the EPC which requires that the disclosure in the specification should
be in such terms that the technical problem and its solution can be understood. The
Board, however, reached the conclusion that if the subject-matter of an independent
claim, for which there is sufficient disclosure, is judged as being inventive in
character, it must always be possible to derive a technical problem from the
application, thus, in effect holding that there was no separate requirement for a
disclosure of a problem and solution as long as it could be deduced that these exist.48

47 T 26/81, Containers/Imperial Chemical Industries [1982] EPOJ, p. 211

48 JOHN RICHARDS, 10 YEARS

OF

SUBSTANTIVE LAW DEVELOPMENT

IN

EUROPEAN PATENT

OFFICE, 71 J. Pat. & Trademark Off. Soc'y 1989 320 at 339

17 | P a g e

Conclusion
The researchers through their research in their project have also realized certain inherent
defects with such approach followed in the European Patent Office, and their answers have
not yet been resolved:
a) What happens to such inventions which do not have closest prior art and fail to prove
the step one of problem solution approach?
b) What is the fate of products which involve partial solution to a problem persistent
over the years?
c) How products which involve simple answers to persistent problem but later turn out
to be obvious?
In the case of Actavis UK Ltd v Novartis AG49 Jacob LJ's stated that the greatest misgivings
about the "problem and solution" approach lay in the EPO Guidelines for Examination's
reference to the "reformulation" of a technical problem based on objectively established facts.
The tribunal will have to artificially create a problem that was supposed to be solved by the
invention.

In

Jacob

LJ's

view,

"re-formulation"

really

means

"retrospective

construction"50.The learned judge also made reference to the 5 1/4 inch plate paradox, which
was explained as follows. Suppose the patent claim is for a plate of diameter 5 1/4 inches and
no one can find a plate of that particular diameter in the prior art. Therefore, it is novel and
non-obvious for there is no particular reason to choose that diameter. The conclusion is that
the plate is patentable, and the fact that the "problem and solution" approach has no answer to
this makes the result of paradox absurd.51
The above mentioned limitations have risen questions as to how effective is the present
approach followed by EPO, which has led us to form a more authentic approach that could
answer the majority of the above raised questions. One such attempt has been made by Lord
Hoffman In the case of Biogen hinted that the definition of "inventive concept" is an
indispensable step in the evaluation of inventive step, suggesting that at the second stage of

49 Actavis UK Ltd v Novartis AG [2010] EWCA Civ 82

50 Ibid, at [32-34]
51 Ibid, at [36]
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the Windsurfing formulation52 it would be helpful to infuse, where applicable, a "problem and
solution" analysis into the identification of the inventive concept. As it would satisfy two
purposes-:
a) that the Windsurfing formulation may be elevated to more than "just a guide"
b) that the said formulation is not closed to the application of EPO-based methodology,
examining guidelines and other literature, recognising the increasing receptivity of
European patent law standards and examining practices in various jurisdictions.
And at the same time it should be recognized that not all inventions are based on "problem
and solution". Not all inventions are to be classified as successful solutions to a problem that
had hitherto identified a long-felt want. To the contrary, inventions may not only be the result
of long experiments and profound research but also of chance, sudden lucky thought or mere
accidental discovery. Inventions that are an advance of contemporary expectations and reveal
an unfelt want may also involve an inventive step. For these categories of inventions,
experiments and research may throw no light on the quality of what was claimed to be an
inventive step53. It has been hinted by the court that if a more infused approach is followed
then could result in filling the gaps of both the Windsurfing test and problem-solution
approach., therefore it is suggested that a more appropriate approach by infusing both the
popular test should be formulated, such an approach could include the following aspects as
mentioned below-:
(1) Identifying various factors involved in judging the invention:
(a) Identify the notional "person who is skilled in the art";
(b) identify the relevant "common general knowledge" of that person;
(c) identify the relevant field-specific knowledge of that person; and
(d) identify documents and other materials that the person skilled in the art would
have identified as a starting point to tackle a new problem.
(2) Identify the inventive concept of the claim in question, or if that cannot readily be done,
construe it by reference to:
(a) a problem-and-solution approach; and
52 The test has been explained above.
53 STANLEY, THE FUTURE OF INVENTIVE STEP IN PATENT LAW, (2012) 24 Sac LJ
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(b) if the inventive concept is not problem-based (so as not to encapsulate a solution),
consider whether the invention is the result of sudden thought, chance or accidental
discovery.
(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 as construed.
(4) Do these differences constitute steps that would have been obvious to the person skilled in
the art or do they require any degree of invention by reference to the following factors?:
(a) The characteristics of the problem that the claim addresses (including but not
limited to how long it has existed and how significant it was known to be);
(b) What prior art would have been known or considered in finding a solution to the
problem that the claim addresses, and what other solutions exist in the prior art?;
(c) Was the solution contained in the claim one that was obvious to a skill addressee
to try with a fair expectation of success? and,
(d) How well has the patentee's invention been received (commercial success that is
the outcome of inventiveness)?
The above mentioned four-step approach54 have been developed from both the tests and if
adopted by EPO can result in filling the gap in the problem solution approach. The
researchers believe that even though the Problem-Solution approach is concluded to be one of
the most efficient test for judging inventiveness, there can be certain inherent defects which
may be overruled by adopting this approach.

54 Ibid.
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