Patents - patentability at the EPO Flashcards
What does R. 42(1)(c) EPC state?
(1) The description shall disclose the invention, as claimed,
(2) in such terms that the technical problem, even if not expressly stated as such,
(3) and its solution can be understood,
(4) and state any advantageous effects of the invention with reference to the background art.
What does Art. 56 EPC state?
(1) An invention shall be considered as involving an inventive step
(2) if, having regard to the state of the art,
(3) it is not obvious to a person skilled in the art.
What are the steps of the problem-solution approach used to evaluate the requirements of Art. 56 EPC?
(1) identifying the “closest prior art”
(2) assessing the technical results (or effects) achieved by the claimed invention when compared with the closest prior art
(3) defining the technical problem to be solved as the object of the invention to achieve those results, and
(4) examining whether or not a skilled person, having regard to the closest state of the art, would have suggested the claimed technical features in order to obtain the results achieved by the claimed invention.
In case T800/91, what did the BoA state regarding a valid objective technical problem?
“In any case the formulated problem should be one which the skilled person would wish to solve knowing only the prior art: the problem should not be tendentiously formulated in a way that unfairly directs development towards the claimed solution.”
In case T967/97, what did the BoA state regarding the reasoning underlying the problem-solution approach?
“The problem-solution approach is fundamentally based on actual findings about the technical problems and approaches to their technical solutions arising from the knowledge and skills that the skilled person possesses objectively, i.e. without any knowledge of the patent and the invention with which it is concerned, at the priority date”
(“Der Aufgabe-Lösungs-Ansatz beruht im wesentlichen auf tatsächlichen Feststellungen über technische Aufgaben und Wege zu deren technischer Lösung, die dem Kenntnisstand und Können des Fachmanns objektiv, d. h. ohne Kenntnis der Patentanmeldung und der Erfindung, die sie zum Gegenstand hat, zum Prioritätszeitpunkt zuzurechnen waren. “)
