Inventive Step In The USA, The UK and in Europe

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Inventive Step In The USA, The UK and in Europe

"… and in every age there come forth things that are new and have no foretelling, for they do not proceed from the past."1

Introduction

What is an invention? We need to know, or we have no basis for discerning invention in any set of facts placed before us. But the EPC does not define "invention" in any its 178 Articles, the reason being that the contracting states were unable to agree on such a definition2. Our colleagues in other jurisdictions are under a similar handicap. Fortunately the EPO Appeal Boards have filled the gap. They have devised a test for inventive step that is easy to apply, gives consistent and widely accepted results, and is arguably better than any comparable test used anywhere else in the World.

With hindsight it is not surprising that this should have happened. When the EPO was established the members of the Boards of Appeal were drawn from senior practitioners from all the contracting states, and the jurisprudence of the Appeal Boards has resulted from a fusion of their national traditions and ideas.

The EPO approach to problem/solution analysis which as will be explained below is effect-based is not identical to the Germanic approach which involved (a) ascertaining the problem to be solved, (b) selecting the technical principle to be applied, and (c) selecting particular means to solve the problem, unobviousness in any of the above stages supporting inventive step3. Problem/solution analysis was an ingredient of German law, just as it could be found in U.K. law but this author has been unable to find evidence that it was so dominant a test for determining patentability as it is under the EPC. There were other important concepts of German law that have not been expressly carried forward into the EPC or the jurisprudence of the EPO Appeal Boards, such as erfindungshöche and technical advance. About the time when the EPO opened, the contemporary writings of our German colleagues do not show a sustained effort directed at convincing practitioners in the UK and that problem/solution analysis should be made into the dominant feature of the test for inventive step to be applied by the EPO. Instead they were drawing attention to the disappearing German concept of technical advance4. The author recalls from discussions with George Szabo who was one of the founder members of the EPO Appeal Boards that the technical problem test evolved immediately after the EPO was established as a result of intensive discussions and studies carried out by the newly appointed members of the Appeal Boards in preparation...

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