" and in every age there come forth things that are new and have no foretelling, for they do not proceed from the past."1
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 erfindungshche 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 for the expected flow of appeal cases, that they were determined to take advantage of the best features of all their national traditions, and that it is misleading to ascribe the features of the EPO approach to the traditions of any one country.
Is it positive or negative characteristics that matter?
The EPC, like the UK Patents Act 1949 and like 35 USC bolts together concepts of inventiveness and obviousness that are not synonymous. Art. 52(1) EPC requires an invention to involve an inventive step. Article 56 explains that an invention should be considered as involving an inventive step if it is not obvious to a person skilled in the art. But if "inventive step" makes no significant addition to the Convention, why did not Art. 52(1) simply specify un-obviousness as its third criterion?
"Invention" comes from the Latin verb invenire meaning to find or to come upon. On that basis, the Convention requires an invention to have the positive attribute of an underlying discovery by the inventor. That requirement fits the structure of patent claims, which specify a set of integers, relationships between the integers and a function or result that flows from providing those integers and establishing those relationships. The new function or result, if unexpected, provides the required positive attribute and can be identified with the invenium or finding upon which the concept of "invention" is based. That formulation is consistent with the expectations of most scientists and engineers who it is submitted expect a patentee to have achieved something positive before he can apply for a patent. It is also consistent with the views of those who drafted the US Constitution, who were working in the common law tradition and in the light of some 160 years experience since the passing of the Statute of Monopolies5. They included in the Constitution a provision authorizing Congress "To promote the progress of useful arts by securing for limited times to inventors the exclusive right to their discoveries."
Before the introduction of obviousness as a statutory requirement into UK6 and US7 law, the courts focused on the requirement of inventiveness, and older UK and US decisions should be read with this in mind. For example, in the U.K. the courts held that a scintilla of invention was needed to support the subject matter of a claim8. In the USA, the Supreme Court held that patentability required the involvement of more ingenuity than the work of a mechanic skilled in the art9 and in 1941 controversially went on to say that an invention should reveal the flash of creative genius10. On this formulation, the skilled person implicitly has a degree of creative power. In the European view the skilled man does not display ingenuity, is cautious in modifying or adjusting a known product or process but would make appropriate changes that appeared to be easy and to involve no obvious risks11. Laddie J. has further described him in his decision in Pfizer v Lilly Icos12 in the following memorable passage:
"The question of obviousness has to be assessed through the eyes of the skilled but non-inventive man in the art. This is not a real person. He is a legal creation. He is supposed to offer an objective test of whether a particular development can be protected by a patent. He is deemed to have looked at and read publicly available documents and to know of public uses in the prior art. He understands all languages and dialects. He never misses the obvious nor stumbles on the inventive. He has no private idiosyncratic preferences or dislikes. He never thinks laterally. He differs from all real people in one or more of these characteristics. A real worker in the field may never look at a piece of prior art for example he may never look at the contents of a particular public library or he may be put off because it is in a language he does not know. But the notional addressee is taken to have done so. This is a reflection of part of the policy underlying the law of obviousness. Anything which is obvious over what is available to the public cannot subsequently be the subject of valid patent protection even if, in practice, few would have bothered looking through the prior art or would have found the particular items relied on. Patents are not granted for the discovery and wider dissemination of public material and what is obvious over it, but only for making new inventions. A worker who finds, is given or stumbles upon any piece of public prior art must realize that that art and anything obvious over it cannot be monopolized by him and he is reassured that it cannot be monopolized by anyone else."
Obviousness come comes from the Latin ob+via, meaning by the wayside13. So the emphasis is not on discovery but on accessibility, and what is being looked for is a negative attribute i.e. that the skilled person would have come upon the claimed subject matter sooner or later and without having to display ingenuity. When introduced into statute law, an obviousness test tends become substituted for an enquiry into inventive character. Indeed, Judge Giles S. Rich argued that the introduction of obviousness standard into US law removed any separate requirement for inventive character, which he described as a rough-hewn stopgap with which the courts had filled in a void in the patent law, but which had now been replaced by a carefully worked-out statutory substitute of non-obviousness14.
Unfortunately life is not that simple. Many things are not obvious in the sense of readily accessible but do not involve ingenuity. A familiar example is the set of winning numbers for the next draw in the National Lottery. It is not difficult and mildly entertaining to devise groupings of familiar objects that would be difficult to trace collectively to the prior art15 but which do not achieve any unexpected effect or solve any technical problem. It is arguable that the point raised by Judge Rich had already been answered by the US Supreme Court in Graham v John Deere16 where it was held that the requirement for invention or patentable novelty had existed in US law since at least 1850, and that the new law had merely codified existing judicial precedents and introduced an enquiry as to the obviousness of the subject matter claimed as a prerequisite to patentability. In other words, to be patentable an invention must have patentable novelty and be free from objection on the ground of obviousness. Essentially the same point arose before the EPO Appeal Board17 where applicants argued that the significant question in relation to the obviousness of a claimed class of compounds was whether it was obvious to prepare any compound within the class, and not whether all the compounds within the class solved a technical problem. The Appeal Board rejected this argument on the basis that the extent of the patent monopoly should correspond to and be justified by the technical contribution to the art: it follows that there must be a positive technical contribution to justify a patent. Both discovery and accessibility can be important and both of them are habitually considered by the EPO and by national courts under the heading of "obviousness". One of the problems that we often face is to identify which of them is likely to be crucial in a case that we are currently handling.
The "scales of justice" approach
Do we need a test that is more sophisticated than...