A few months ago, Roy Marsh, a British and European patent attorney currently practicing in Munich, approached JIPLP to express his disagreement with the criticism expressed by some authors and judges towards the EPO's Problem and Solution Approach. We encouraged him to discuss his point of view in an article, also to stimulate further debate among our readers and more widely. In the following Authors' Take posts, Roy provides not one but two short summaries of his work: the first is a more typical abstract, while the second illustrates Roy's ideas with his characteristic verve and enthusiasm We hope readers will appreciate both versions, as well as Roy's full article (available here)!]
Obviousness: what’s the problem?
by Roy Marsh
Take 1
When it comes
to judging obviousness, the simplest mechanical contrivances can present the
most ticklish problems. The author, upon
entry to the profession in 1973, discovered that one of the landmark House of
Lords cases on patent validity in England was the tractor-drawn hay rake case between van der Lely and Bamfords. Being the son of a dairy farmer, he well knew the products of the respective parties, their attributes in the
field, and the commercial success of the patentee’s “ACROBAT” device, not at
all surprising to him, given its elegant and robust design and its delightful
effectiveness, speed and agility in use.
Since then, the
author has gradually come to the view that the EPO’s “effects-based”
problem-and-solution-approach (PSA) to obviousness has manifold public policy
benefits which continue to go largely unrecognized even today, 40 years after
its creation back when the EPO first opened its doors for business. PSA cut through the encrustations of national
law on obviousness. But that is not all.
PSA also:
1) obliges patent drafters to render their
specifications attractive reading for R&D people;
2) short-circuits the “eligibility” argument in
the software space; and
3) subsumes much of the argument on
enablement.
Today, more
than ever, in an era of dangerous climate change, we need technical
progress. The raison d’être of a patent system is to promote such progress. We ought therefore to be urgently seeking
ways to make patents more accessible to R&D people, and worth their while
to read them. One way is to adjudicate obviousness using EPO-PSA.
Courts and
litigators are already influenced by the EPO case law on novelty. It is vital that they also open their minds
to the public policy benefits of doing obviousness like the EPO does it.
Take 2
Must it
be? Must the law get ever more
complicated? Look at tax law and one
might suppose that the competition between gamekeepers and poachers – the State
vs. the legal eagles – makes inevitable an ever-increasing complexity, and with
it ever-diminishing levels of respect for the Rule of Law.
Well, it is not
inevitable. At least not in patent
law.
Back in the
1970s, we made a fresh start, with the PCT and the EPC, sweeping away the
accumulated encrustations of the former patent law of the UK. With this re-boot a whole new style of
drafting patent applications came into force. Imperative was to explain to
their readers what technical features constitute the invention and what technical
problem the invention is solving. Patents are addressed to technical readers, are supposed to promote the
progress of the useful arts, and so ought to be accessible to engineers and
scientists, and to stimulate them into devising different and better solutions
to problems in technology. Today, more
than ever, we need technical solutions to save our planet from climate change
effects. More than ever, we need as many
design-arounds as we can stimulate.
The EPO’s
problem-solution-approach (PSA) does this, and much more, but there are few
people that grasp its importance. With
this article, I want to change that.
By taking its
“effects-based” approach to patentability over the prior art, PSA not only forces
better drafting. It also cuts through over
the accumulated layers of dissimulation that have become part of the enquiry
whether the subject-matter claimed is “obvious”. And its success, in streamlining the
obviousness enquiry, has enabled it to solve problems in the enquiry as to
patentable eligibility (Art. 52 EPC) and the one into sufficiency of disclosure
(Art. 83 EPC).
Can this
article alert members of the litigation community to the public policy
advantages of following the EPO-PSA method of exploring the ticklish
obviousness problem? I do hope so.
