Aiming high now: Maybe not only in prosecution, but even in litigation therafter!
We are surely not yet there.
For instance, the German Federal Court of Justice (FCJ) has some reservations, as discussed by judge Klaus GRABINSKI here:
The [EPO] Guidelines stipulate that deviation from this strictly schematic approach should be exceptional. The approach serves the interests of objective and predictable assessment in the examination procedure, in which, under Article 18(2) EPC, only the applicant and one member of the examining division are normally involved. Its appropriateness in this context is not to be questioned here; however, for a court procedure conducted on an adversarial basis between two or more plaintiffs and defendants, its suitability is limited.
But what are these reservations?
Firstly, the choice of a (single) closest prior art as the starting point in the assessment of obviousness, in GRABINSKI’s view:
Experience shows that, in nullity proceedings, the plaintiff generally presents several starting points (documents, public prior uses, etc.) in respect of inventive step. The court then has to assess whether the skilled person would actually have selected these starting points. According to the case law of the German FCJ, the choice of a specific starting point for the consideration of inventive step requires particular justification. This can be derived from the skilled person’s endeavour to find, for a specific purpose, a solution better than or different from the solution provided in the prior art. The test can be applied with one or more starting points (documents, public prior uses, etc.). There is no reason to limit the assessment of inventive step from the outset to the “closest prior art”. Otherwise, there is the risk of an inadmissible ex post evaluation of the prior art with regard to what is “closest”.
However, GRABINSKI holds that the EPO’s approach essentially does not differ much (what I believe is true, and I will come back to this in the below):
Ultimately, the same view would appear to prevail in the [then] current Guidelines for Examination. The authors concede, with reference to several decisions of the boards of appeal, that in some cases there are several equally valid starting points for the assessment of inventive step and that, in the event of refusal, it is sufficient to show, on the basis of relevant prior art in respect of at least one solution, that the claimed subject-matter lacks an inventive step. In such a situation, 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.
The formulation of the objective technical problem is key in the EPO’s problem-solution approach. Admittedly, this involves a somewhat artificial, retrospective approach. But it does so by design and in the interest of legal certainty, for that it be a reliable tool with predictable results. In my perception, the German FCJ takes a somewhat different approach; the problem(s) it typically refers to is/are not the objective technical problem of the problem-solution approach — at least not necessarily; see e.g. the discussion of the FCJ’s decision X ZR 29/15 - Pemetrexed by Rainer ENGELS here.
But be that as it may, I have no reason to blame the German FCJ for its approach. It may or may not be better suitable to avoid hindsight, or to provide legal certainty for users. There is more than one way to skin a cat, and the German FCJ never said to have adopted the EPO’s problem-solution approach.
However, the Swiss FPC did — repeatedly and in no uncertain terms (see e.g. O2015_018, ¶30):
Le Tribunal fédéral des brevets applique l’approche problème-solution développée par l’Office européen des brevets dans le cadre de l’évaluation de l’activité inventive.
The Federal Patent Court applies the problem-solution approach developed by the European Patent Office in the context of the evaluation of inventive step.
Hooray! They play the game as I know it!!
Thus, European patent attorneys in civil proceedings at the FPC can just do what they do all day long in proceedings at the EPO, at least in the assessment of obviousness? Actually, this would not come as a complete surprise since the second permanent judge (Tobias Bremi) and 27 of the non-permanent judges have a technological background and are European patent attorneys by training.
But hold on, it’s maybe not that easy.
Clearly, the FPC has the same reservations with respect to the choice of a (single) closest prior art; see O2013_011 in the hn and ¶5.6, with further reference to T 967/97, as well as S2017_001, ¶4.6.
But I feel that GRABINSKI is right in that this is nothing out of the ordinary in EPO practice (as it should be, taking into account the case-law of the Boards of Appeal); it is just that the term closest prior art used in the problem-solution approach might be misleading in that it suggests that this is always just a single document.
But what concerns me in recent times is the concept of a reasonable expectation of success; see this Blog here. The argument that there had been no reasonable expectation of success is easily made and thus frequently seen. And it is always easy to cast doubts in the assessment of obviousness:
Just imagine what could have gone wrong!
What is worse, such arguments cannot be proven wrong: Indeed, life is risky.
Not fully according to expectation …
Now, what the heck is actually a reasonable expectation in the skilled person‘s eyes?
The EPO Guidelines
The Guidelines are firm instructions to the first instance bodies of the EPO; see the foreword:
As a general rule, parties may expect the EPO to act in accordance with the Guidelines until such time as they – or the relevant legal provisions – are amended. […] In case of diverging decisions of the Legal or Technical Boards of Appeal, EPO examiners and formalities officers will, as a rule, follow the common practice as described in the Guidelines.
Patent applications filed with the EPO (Source: EPO)
More than 160’000 patent applications are filed with the EPO per year. And obviousness is to be assessed for all these applications; Art. 56 EPC.
If the concept of a reasonable expectation of success was of general importance for the daily practice of the first instance bodies at the EPO, one would readily expect it to be addressed in the Guidelines.
But, interestingly, it is not discussed at all — at least not in the chapter on assessment of obviousness.
The term reasonable expectation of success is only mentioned once in the Guidelines, but only a contrario, in the context of novelty of selection inventions in G-VI, 8:
The concept of seriously contemplating, or ‘ernsthaft in Betracht ziehen’ in German, is fundamentally different from the concept used for assessing inventive step, namely whether the skilled person would have tried, with reasonable expectation of success, to bridge the gap between a particular piece of prior art and a claim whose inventiveness is in question (see G-VII, 5.3), because in order to establish anticipation, there cannot be such a gap (T 666/89).
If you follow the link to G-VII, 5.3 in the hope to learn more about the concept of a reasonable expectation of success, you will be disappointed: There is nothing about reasonable expectation of success. G-VII, 5.3 is all about the could-would approach as we all know it. It reads as follows:
[T]he 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 he would have done so because the prior art incited him to do so in the hope of solving the objective technical problem or in expectation of some improvement or advantage (see T 2/83).
Hold on a second.
It is worth reading the second paragraph again. The expectation of some improvement or advantage language is taken literally from T 2/83. But did you notice the other alternative?
I don’t know where the wording in the hope of solving the objective technical problem comes from; this inconsistency has already been discussed by discussed by Wooden, Blaseby and Visser recently. It somehow found its way into the Guidelines already back in 2003. But T 2/83 is silent about hope. The could-would approach clearly is not about hope; it is about an expectation.
Anyway, there is nothing about a reasonable expectation of success. It is only about an expectation of some improvement or advantage.
Now, do these terms maybe both mean essentially the same? I.e., is
success only the short for some improvement or advantage; and
the expectation (implicitly) meant to be reasonable in any event?
Too many people making too many problems?
If so, fine. But wouldn’t it be good to use the same terms when referring to the same things? It’s a land of confusion anyway.
Or are they not the same? If that was the case, then the concept of a reasonable expectation of success just cannot be of any broader relevance for the first instance bodies at the EPO at all. Else, it would surely be referred to in the Guidelines.
Getting confused? Hold on tight, it’s not getting easier …
Learnings from the FPC
Decision S2017_001 in r 4.7 embraces the EPO’s could-would approach recited above. With reference to Kroher (Singer/Stauder, EPÜ, 7th ed., Art. 56, ¶73-74) the decision further holds that the ‘would’ is satisfied if there is a motivation to arrive at the claimed solution and an expectation of success that this solution actually works:
Dass der Fachmann die erfindungsgemässe Lösung effektiv finden würde gilt als gezeigt, wenn aus den Unterlagen ersichtlich ist, dass der Fachmann einen Anlass hatte (‘motivation’), zur erfindungsgemässen Lösung zu kommen, und er eine Erfolgserwartung hatte, dass die erfindungsgemässe Lösung auch funktioniert (‘expectation of success’).
Noteworthy, this does not even require the ‘expectation of success’ to be reasonable, and that the ‘success’ is realistically achievable — at least not explicitly. Kroher did not put it like this. This is what Kroher exactly says (emphasis added):
Zum Could-would Ansatz gehört auch die Wertung, ob für den Fachmann eine angemessene Erfolgserwartung bestand, ob er auf der Grundlage seines Wissens und Könnens realistisch mit einem Erfolg rechnen konnte oder nicht (vgl Rdn 136).161
First, none of the references cited in the fn actually says that the assessment of a reasonable expectation of success is part of the could-would approach. So, where does this come from?
Second, assuming that it really was part of the could-would approach, then how can it be that examiners and opposition divisions of the EPO deal with more than 160’000 cases per year in the absence of any instructions in the Guidelines? An integral part of the could-would approach did not make it into the Guidelines for decades? I can hardly believe that.
Third, the cross-reference to ¶136 in the Kroher chapter exclusively relates to biotech cases. And this is where it belongs — pretty exclusively, in my perception. Actually, the Boards of Appeal of the EPO have come up with the concept of a reasonable expectation of success in biotech cases. Frankly, I am not aware of any non-pharma or non-biotech case where the reasonable expectation of success argument had ever been successfully invoked to establish non-obviousness.
In sum, Kroher’s conclusion is not readily convincing to me, and it is not supported by the references given. I could only agree, again, if the reasonable expectation of success does not mean anything different than the expectation of some improvement or advantage according to the problem-solution approach.
What troubles me is that the FPC’s concise summary in S2017_001 is not just a summary of Kroher, or any other reference cited by Kroher. Rather, it adds further terms and interpretation, and appears to be more harsh in that the terms ‘reasonable’ and ‘realistic’ are just omitted.
[…] the skilled person would have arrived at the invention by adapting or modifying the closest prior art because the prior art incited him to do so […] in expectation of some improvement or advantage (see T 2/83).
In my understanding, the test is fairly easy. The skilled person could have done a lot. What the could-would approach is all about is to sort out what he actually would have done. Nothing more, nothing less. It does so by requiring prompters (sometimes referred to as pointers) or incentives in the prior art for the skilled person to arrive at the invention.
Ask Google for a definition of ‘motivation’, and you will get this.
Durchflussmessfühler (10) mit einem ein zylindrisches Gehäuse (10) definierenden Durchgang mit einer ersten Durchgangsöffnung (13) und einer zweiten Durchgangsöffnung (29); einem im Durchgang des Gehäuses angeordneten Strömungswiderstand (23), welcher das Gehäuse in einen ersten und einen zweiten Gehäuseteil (11 und 27) unterteilt; einer ersten Anschlussstelle (17) mit einer Verbindung zum Innern des ersten Gehäuseteils (11); und einer zweiten Anschlussstelle (19) mit einer Verbindung zum Innern des zweiten Gehäuseteils; dadurch gekennzeichnet, dass die ersten und zweiten Anschlussstellen (17, 19) in einem Abstand voneinander auf dem gleichen Gehäuseteil angeordnet sind.
Fig. 1 of CH 701 755 B1
The defendant denies an infringment, and argues for nullity as a plea in defense.
This case is already pending for two years. Likewise, the main hearing yesterday has been quite lengthy: Plaintiff’s initial pleadings took about 2.5 hours, and defendant’s reply took yet another two hours. The hearing was not even finished thereafter, but we just could not attend any longer. Anyway, some key aspects of the case became pretty clear from both parties’ first pleadings.
In our understanding, the expert opinion of the judge-rapporteur had held that the patent as granted was not valid. However, the judge-rapporteur apparently also held that the patent would be valid in a more limited extent, and that it would still be infringed to that extent. Thereafter, the plaintiff apparently submitted that he only invoked the patent to an extent that had been held valid by the judge-rapporteur. Defendant firmly denied that this ‘verbal limitation’ (verbale Einschränkung) was admissible and argued that the case had to be dismissed if claim 1 of the patent as granted was invalid.
Further, the defendant relied on i) a prior use; and ii) US 6,585,662 when arguing for lack of an inventive step.
Fig. 8 of US 6,585,662
It remains to be seen how all this turns out, but from what has been argued at the hearing we conclude that it is currently an uphill fight for the defendant. And it did not seem as if this was a case to be concluded with a settlement. Stay tuned.
The patent at stake is about an apparatus for cooking food products. More information about the patentee’s product ‘Feuerring’ can be found on the patentee’s homepage.
The only independent claim 1 of EP’003 as granted read as follows:
An apparatus for cooking food products, said apparatus comprising a firebox (4) with an axially symmetrical form, the firebox (4) having a box wall (6) and a box edge (8), which defines the box wall, and being intended to accommodate a combustion material which, during combustion, outputs the thermal energy required for cooking, and having a continuous heating surface (10) which runs substantially at a right angle to the axis (A) of the firebox (4), surrounds an opening (12) arranged about the axis and is intended for the direct cooking of the food products, wherein between the box wall (6) and the heating surface (10) there is arranged a false floor (14) which is intended to support the combustion material, characterised in that the false floor (14) and the box wall (6) have an outlet opening (24 or 22) each for removing the residue of the combustion material from the apparatus.
This can be best understood with the figures of EP’003 at hand:
Opponent Nouvel AG lodged an appeal, and the FPC now requested to accelerate these appeal proceedings. Interestingly, two separate briefs with reasons of appeal have been filed: One by Felber & Partner, the other one by Manitz Finsterwald. Patentee / respondent has filed a reply.
Not much is known about the actual subject of the proceedings pending at the FPC, except for the party representatives: Simon Holzer (MLL) and Andri Hess (Homburger). In view of MLL‘s involvement in the matter, Mark Schweizer apparently stepped back and Christian Hilti is chairing these proceedings.
Der Luxusgüterkonzern Richemont liegt wegen einer patentgeschützten Erfindung mit dem Konsortium aus Rolex, Patek Philippe and Swatch Group im Clinch.
A silicon hairspring technology had been developed by the consortium, together with CSEM, already about 15 years ago.
Vor über fünfzehn Jahren haben die Grossen der Branche […] ihre Kräfte gebündelt — und mit dem Forschungsinstitut CSEM in Neuenburg die Siliziumtechnik in der Unruhspirale 2005 zur Serienreife entwickelt.
Richemont’s silicon hairspring technology Twinspir in Baume & Mercier’s new movement Baumatic apparently is the bone of contention:
Details of B&M’s Baumatic movement with Twinspir technology (website)
The NZZaS did not provide much details about the conflict, and no sources are revealed. It is only that Baume & Mercier’s CEO, Geoffroy Lefebvre, is cited with the confirmation that discussions with the consortium are ongoing, and that no patent has been illegitimately used. B&M is said to argue that their hairspring is designed differently. According to NZZaS, the consortium does not agree, and judges will have to decide.
‘Es gibt Diskussionen mit dem Konsortium’, antwortet Lefebvre knapp. Er betont, dass kein Patent ‘gesetzeswidrig genutzt’ worden sei. Das Konsortium sieht das offenbar anders, wie von Kennern des Sachverhalts zu hören ist. Baume & Mercier argumentiert, dass ihre Unruhspirale anders aufgebaut (aus zwei Strängen) sei — und darum kein Patent verletzte. Am Ende werden die Richter den Sachverhalt klären müssen.
×UPDATE 27 Sep 2018:
I have been informed that NZZaS apparently already mentioned in an article of 2 Sep 2018 that the consortium alleges a patent infringement (see here): “Das Konsortium hat offenbar bei Richemont wegen einer möglichen Patentverletzung interveniert.” Again, no sources or further details are revealed; the basis of this information is obscure. It remains to be seen how this finally unfolds.
Reported by Martin WILMING
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I have attended quite some public hearings at the FPC over the last years. Frankly, most of them are boring.
Why is that?
It surely is not because of the subject-matter at stake; that’s the interesting part. It’s the pleading notes that bother me. In most cases, pleading notes are handed over to the judges, the clerk and the other party, and those pleading notes are then read out. Literally.
Reading for hours? Not in court, please!
Guess, what happens: Everybody is immersed in a manuscript, reading it on his/her own — while someone reads the same pleading out aloud.
I cannot think of a worse disconnect between the pleading attorney and the judges! One could as well exchange the pleading notes in writing and skip this part of the hearing. It’s a somewhat weird happening.
Wir neigen dazu, statt einer Rede einen Schriftsatz zu verfassen und im Gerichtssaal beim Ablesen daran zu vertrocknen.
We tend to write a brief instead of a speech and dry up in the courtroom as we read it.
I am trained as a patent attorney, not as a lawyer. Even though I never liked this reading ceremony, I thus complied with it by now. It’s probably not the best idea to be a maverick when not on your home turf.
But does it really have to be like that?
I don’t think so. It’s not the law. I am used to argue my cases for hours in hearings at the EPO, with just some bullet points on the desk to keep me on track. Never would I even think of handing over pleading notes to anyone. My only goal is to get my message through to the Opposition Division or the Board.
Cutting a long story short:
A hearing shouldn’t be a reading, in my opinion.
I am glad to see that it more frequently happens in recent times in hearings at the FPC that no pleading notes are read out aloud and handed over anymore. What I believe is great. Let the real pleadings begin!
I’d be keen to know your thoughts on this:
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Reported by Martin WILMING
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