G-VII 5 P&S Flashcards
- Problem-solution approach
In order to assess inventive step in an objective and predictable manner, the so-called “problem-solution approach” is applied.
In the problem-solution approach, there are three main stages:
(i)
determining the “closest prior art”,
(ii)
establishing the “objective technical problem” to be solved, and
(iii)
considering whether or not the claimed invention, starting from the closest prior art and the objective technical problem, would have been obvious to the skilled person.
5.1 Determination of the closest prior art
The closest prior art is that which in one single reference discloses the combination of features which constitutes the most promising starting point for a development leading to the invention. In selecting the closest prior art, the first consideration is that it must be directed to a similar purpose or effect as the invention or at least belong to the same or a closely related technical field as the claimed invention. In practice, the closest prior art is generally that which corresponds to a similar use and requires the minimum of structural and functional modifications to arrive at the claimed invention (see T 606/89).
In some cases there are several equally valid starting points for the assessment of inventive step, e.g. if the skilled person has a choice of several workable solutions, i.e. solutions starting from different documents, which might lead to the invention. If a patent is to be granted, it may be necessary to apply the problem-solution approach to each of these starting points in turn, i.e. in respect of all these workable solutions.
However, applying the problem-solution approach from different starting points, e.g. from different prior-art documents, is only required if it has been convincingly shown that these documents are equally valid springboards. In particular in opposition proceedings the structure of the problem-solution approach is not that of a forum where the opponent can freely develop as many inventive step attacks as desired in the hope that one of said attacks has the chance of succeeding (T 320/15, Reasons 1.1.2).
In the event of refusal or revocation, it is sufficient to show on the basis of one relevant piece of prior art that the claimed subject-matter lacks an inventive step: there is no need to discuss which document is “closest” to the invention; the only relevant question is whether the document used is a feasible starting point for assessing inventive step (see T 967/97, T 558/00, T 21/08, T 308/09 and T 1289/09). This is valid even if the problem identified in a problem-solution reasoning may be different from the one identified by the applicant/patentee.
As a consequence the applicant or proprietor cannot refute the argument that the claimed subject-matter lacks inventive step by submitting that a more promising springboard is available: a piece of prior art on the basis of which the claimed invention is considered non-obvious cannot be “closer” than a document on the basis of which the claimed invention appears obvious, because it is evident in this situation that the former does not represent the most promising springboard from which to arrive at the invention (T 1742/12, Reasons 6.5; T 824/05, Reasons 6.2).
The closest prior art must be assessed from the skilled person’s point of view on the day before the filing or priority date valid for the claimed invention. The examiner must not make an artificial interpretation of the closest prior art based on prior knowledge of the application (see also G‑VII, 8).
In identifying the closest prior art, account is taken of what the applicant acknowledges in the description and claims to be known. Any such acknowledgement of known art is regarded by the examiner as being correct unless the applicant states that a mistake was made (see C‑IV, 7.3(vii)).
5.2 Formulation of the objective technical problem
In the second stage, one establishes in an objective way the technical problem to be solved. To do this one studies the application (or the patent), the closest prior art and the difference (also called “the distinguishing feature(s)” of the claimed invention) in terms of features (either structural or functional) between the claimed invention and the closest prior art, identifies the technical effect resulting from the distinguishing features, and then formulates the technical problem.
Features which cannot be seen to make any contribution, either independently or in combination with other features, to the technical character of an invention cannot support the presence of an inventive step (see T 641/00). Such a situation can occur for instance if a feature only contributes to the solution of a non-technical problem, for instance a problem in a field excluded from patentability. For the treatment of claims comprising technical and non-technical features, see G‑VII, 5.4. The criteria for determining whether a feature, even if non-technical in isolation, contributes to producing a technical effect in the context of the invention are explained in G‑II, 3 and subsections, for different types of subject-matter listed under Art. 52(2).
In the context of the problem-solution approach, the technical problem means the aim and task of modifying or adapting the closest prior art to provide the technical effects that the invention provides over the closest prior art. The technical problem thus defined is often referred to as the “objective technical problem”.
The objective technical problem derived in this way may not be what the applicant presented as “the problem” in the application. The latter may require reformulation, since the objective technical problem is based on objectively established facts, in particular appearing in the prior art revealed in the course of the proceedings, which may be different from the prior art of which the applicant was actually aware at the time the application was filed. In particular, the prior art cited in the search report may put the invention in an entirely different perspective from that apparent from reading the application only. Reformulation might lead to the objective technical problem being less ambitious than originally envisaged by the application. An example of such a case would be where the originally stated problem is the provision of a product, process or method demonstrating some improvement, but where there is no evidence that the claimed subject-matter is thereby improved over the closest prior art uncovered in the search; rather, there is only evidence with respect to more distantly related prior art (or possibly none at all). In this case, the problem has to be reformulated as the provision of an alternative product, process or method. The obviousness of the claimed solution to that reformulated problem must then be assessed in the light of the cited prior art (see T 87/08).
The extent to which such reformulation of the technical problem is possible has to be assessed on the merits of each particular case. As a matter of principle any effect provided by the invention may be used as a basis for the reformulation of the technical problem, as long as said effect is derivable from the application as filed (see T 386/89). It is also possible to rely on new effects submitted subsequently during the proceedings by the applicant, provided that the skilled person would recognise these effects as implied by or related to the technical problem initially suggested (see G‑VII, 11 and T 184/82).
It is noted that the objective technical problem must be so formulated as not to contain pointers to the technical solution, since including part of a technical solution offered by an invention in the statement of the problem must, when the state of the art is assessed in terms of that problem, necessarily result in an ex post facto view being taken of inventive activity (see T 229/85). Where the claim refers to an aim to be achieved in a non-technical field, however, this aim may legitimately appear in the formulation of the problem as part of the framework of the technical problem to be solved, in particular as a constraint that has to be met (see G‑VII, 5.4 and G‑VII, 5.4.1).
The expression “technical problem” is interpreted broadly; it does not necessarily imply that the technical solution is an improvement to the prior art. Thus the problem could be simply to seek an alternative to a known device or process which provides the same or similar effects or is more cost-effective. A technical problem may be regarded as being solved only if it is credible that substantially all claimed embodiments exhibit the technical effects upon which the invention is based. Criteria for deciding whether lack of reproducibility of the claimed invention is to be treated under Art. 56 or 83 are explained in F‑III, 12.
Sometimes, the objective technical problem must be regarded as an aggregation of a plurality of “partial problems”. This is the case where there is no technical effect achieved by all the distinguishing features taken in combination, but rather a plurality of partial problems is independently solved by different sets of distinguishing features (see G‑VII, 6 and T 389/86).
5.3 Could-would approach
In the third stage the question to be answered is whether there is any teaching in the prior art as a whole that would (not simply could, but would) have prompted the skilled person, faced with the objective technical problem, to modify or adapt the closest prior art while taking account of that teaching, thereby arriving at something falling within the terms of the claims, and thus achieving what the invention achieves (see G‑VII, 4).
In other words, the point is not whether the skilled person could have arrived at the invention by adapting or modifying the closest prior art but whether the skilled person would have done so because the prior art provided motivation to do so in the expectation of some improvement or advantage (see T 2/83). Even an implicit prompting or implicitly recognisable incentive is sufficient to show that the skilled person would have combined the elements from the prior art (see T 257/98 and T 35/04). This must have been the case for the skilled person before the filing or priority date valid for the claim under examination.
When an invention requires various steps to arrive at the complete solution of the technical problem, it is nevertheless regarded as obvious if the technical problem to be solved leads the skilled person to the solution in a step-by-step manner and each individual step is obvious in the light of what has already been accomplished and of the residual task still to be solved (see T 623/97 and T 558/00).
5.4 Claims comprising technical and non-technical features
It is legitimate to have a mix of technical and non-technical features appearing in a claim, as is often the case with computer-implemented inventions. The non-technical features may even form a major part of the claimed subject-matter. However, in the light of Art. 52(1), (2) and (3), the presence of an inventive step under Art. 56 requires a non-obvious technical solution to a technical problem (T 641/00, T 1784/06).
When assessing the inventive step of such a mixed-type invention, all those features which contribute to the technical character of the invention are taken into account. These also include the features which, when taken in isolation, are non-technical, but do, in the context of the invention, contribute to producing a technical effect serving a technical purpose, thereby contributing to the technical character of the invention. However, features which do not contribute to the technical character of the invention cannot support the presence of an inventive step (“COMVIK approach”, T 641/00, G 1/19). Such a situation may arise, for instance, if a feature contributes only to the solution of a non-technical problem, e.g. a problem in a field excluded from patentability (see G‑II, 3 and subsections).
The problem-solution approach is applied to mixed-type inventions in such a way as to ensure that inventive step is not acknowledged on the basis of features not contributing to the technical character of the invention, while all those features which do contribute are properly identified and taken into account in the assessment. To this end, where the claim refers to an aim to be achieved in a non-technical field, this aim may legitimately appear in the formulation of the objective technical problem as part of the framework of the technical problem that is to be solved, in particular as a constraint that has to be met (T 641/00; see step (iii)(c) below and G‑VII, 5.4.1).
The steps below outline the application of the problem-solution approach to mixed-type inventions following the COMVIK approach:
(i)
The features which contribute to the technical character of the invention are determined on the basis of the technical effects achieved in the context of the invention (see G‑II, 3.1 to 3.7).
(ii)
A suitable starting point in the prior art is selected as the closest prior art with a focus on the features contributing to the technical character of the invention identified in step (i) (see G‑VII, 5.1).
(iii)
The differences from the closest prior art are identified. The technical effect(s) of these differences, in the context of the claim as a whole, is(are) determined in order to identify from these differences the features which make a technical contribution and those which do not.
(a)
If there are no differences (not even a non-technical difference), an objection under Art. 54 is raised.
(b)
If the differences do not make any technical contribution, an objection under Art. 56 is raised. The reasoning for the objection is that the subject-matter of a claim cannot be inventive if there is no technical contribution to the prior art.
(c)
If the differences include features making a technical contribution, the following applies:
–
The objective technical problem is formulated on the basis of the technical effect(s) achieved by these features. In addition, if the differences include features making no technical contribution, these features, or any non-technical effect achieved by the invention, may be used in the formulation of the objective technical problem as part of what is “given” to the skilled person, in particular as a constraint that has to be met (see G‑VII, 5.4.1).
–
If the claimed technical solution to the objective technical problem is obvious to the person skilled in the art, an objection under Art. 56 is raised.
Determination of the features contributing to the technical character of the invention should be performed for all claim features in step (i) (T 172/03, T 154/04). However, in practice, due to the complexity of this task, the examiner can normally perform the determination in step (i) on a first-glance basis only and perform the analysis at the beginning of step (iii) in a more detailed manner. In step (iii), the technical effects achieved by the differences over the selected closest prior art are determined. The extent to which the differences contribute to the technical character of the invention is analysed in relation to these technical effects. This analysis, limited to the differences, can be performed in a more detailed manner and on a more concrete basis than the one performed at step (i). It may therefore reveal that some features considered in step (i) at first glance as not contributing to the technical character of the invention do, on closer inspection, make such a contribution. The reverse situation is also possible. In such cases, the selection of the closest prior art in step (ii) might need to be revised.
When performing the analysis in steps (i) and (iii) above, care must be taken to avoid missing any features that might contribute to the technical character of the claimed subject-matter, in particular if the examiners reproduce their understanding of the subject-matter of the claim in their own words during the analysis (T 756/06).
The examples in G‑VII, 5.4.2.1 to 5.4.2.4 illustrate the application of the COMVIK approach.
5.4.1 Formulation of the objective technical problem for claims comprising technical and non-technical features
The objective technical problem must be a technical problem which the skilled person in the particular technical field might have been asked to solve at the relevant date. It must not be formulated in such a way as to refer to matters of which the skilled person would only have become aware by knowledge of the solution claimed (G‑VII, 5.2). In other words, the objective technical problem must be so formulated as not to contain pointers to the technical solution. However, this principle only applies to those features of the subject-matter claimed which contribute to the technical character of the invention and hence are part of the technical solution. Merely because some feature appears in the claim does not automatically exclude it from appearing in the formulation of the problem. In particular, where the claim refers to an aim to be achieved in a non-technical field, this aim may legitimately appear in the formulation of the problem as part of the framework of the technical problem that is to be solved, in particular as a constraint that has to be met (T 641/00).
In other words, the formulation of the objective technical problem may refer to features which do not make a technical contribution, or to any non-technical effect achieved by the invention, as a given framework within which the technical problem is posed, for example in the form of a requirements specification provided to the person skilled in a technical field. The aim of formulating the technical problem according to these principles is to ensure that inventive step is acknowledged only on the basis of features which contribute to the technical character of the invention. The technical effects used for formulating the objective technical problem have to be derivable from the application as filed when considered in the light of the closest prior art. They must be achieved over the whole scope of the claim. A claim must therefore be limited in such a way that substantially all embodiments encompassed by the claim show these effects (G 1/19, G‑VII, 5.2).
For technical effects which are not directly achieved by the claimed invention but are only “potential technical effects”, see G‑II, 3.3.2.
Regarding technical effects arising from specific technical implementations where the design of algorithms is motivated by technical considerations of the internal functioning of the computer, see G‑II, 3.3.
In the case of claims directed to a technical implementation of a non-technical method or scheme, in particular of a business method or game rules, a modification to the underlying non-technical method or scheme aimed at circumventing a technical problem, rather than addressing this problem in an inherently technical way, is not considered to make a technical contribution over the prior art (T 258/03, T 414/12). Rather, such a solution constitutes a modification to the constraints given to the technically skilled person tasked with the implementation of the given non-technical method or scheme.
In such cases, consideration must be given to any further technical advantages or effects associated with the specific features of the technical implementation over and above the effects and advantages inherent in the underlying non-technical method or scheme. The latter are at best to be regarded as incidental to that implementation (T 1543/06). They do not qualify as technical effects for the purpose of defining the objective technical problem.
Example
In a game played online over a distributed computer system, the effect of reduction in network traffic obtained by reducing the maximum number of players cannot form the basis for formulating the objective technical problem. It is rather a direct consequence of changing the rules of the game, which is inherent in the non-technical scheme. The problem of network traffic reduction is not addressed by a technical solution but circumvented by the non-technical gaming solution offered. The feature defining the maximum number of players thus constitutes a given constraint which forms part of the non-technical scheme that the skilled person, e.g. a software engineer, would be tasked to implement. Whether the claimed specific technical implementation would have been obvious to the skilled person would still have to be assessed.
