The Authors' Take[s] - Obviousness: what’s the problem?

[This is an Authors' Take post, which provides readers with an insight into current IP scholarship, featuring preliminary comments and thoughts from authors of articles accepted for publication in forthcoming issues of the Journal of Intellectual Property Law & Practice (OUP). The full text of this contribution is available in Advance Access.

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. 

Editorial - Something is rotten in the state of the EPO

In our latest issue, Editorial Board member Darren Smyth passionately discusses recent troubling events at the EPO, calling for prompt and incisive actions to address these issues, rethinking the structure and governance of the EPO. You can read the editorial below - Darren concludes his piece by noting that "[t]he EPO represents a unique problem and demands a unique solution, which must now be found". Which solution(s) would readers suggest?

Something is rotten in the state of the EPO 

Darren Smyth 

Email: dsmyth@eip.com

When the drafters of the European Patent Convention conceived of a system whereby the heads of the national patent offices would form an Administrative Council (AC) as a kind of legislature that would exercise oversight over the executive powers of the President, they must have believed they invented a good system. Who could be more disinterested and impartial than the national offices, which were actually competitors of the European Patent Office itself? What the drafters could not have realized, but has now become apparent, it is that the national offices might come to rely financially on the EPO, either in the form of income from renewal fees for patents where the national office has done no examination, or more directly in the form of cooperation and assistance funds. 

Recently, the EPO has been beset by problems. A programme of reform has been pushed through which has led to widespread industrial unrest amongst the workforce, and distrust between the examiners and senior management. The problems have been exacerbated by the fact that the only legal recourse for aggrieved EPO employees is the International Labour Organisation, which has an immense backlog (partly caused by the number of EPO grievances) leading to a delay of many years before cases are decided. While there was little dispute that some reform was needed, the pace and character of the reforms, as well as their style of introduction, created a toxic atmosphere, the scale and causes of which were denied by the management, and relatively unrecognized outside of the EPO itself. The relatively generous salaries of EPO examiners led to a lack of sympathy in some quarters. The wider world only noticed the increasingly troubled situation at the EPO when a member of the Boards of Appeal of the EPO was suspended by the President without the prior sanction of the AC, an action that appeared to compromise the judicial independence of the Boards of Appeal. This occurred shortly after a seminal decision of the Enlarged Board of Appeal (EBA), which upheld an objection of suspicion of partiality against its Chairman, on the sole basis of his dual administrative role within the management of the Office. The response of the President, transferring some administrative powers from the EBA Chairman to himself, seemed to make the problem worse rather than better. 

The judicial independence of the Boards of Appeal is crucial to the finality of their decisions. If the Boards are not accepted as a judicial instance, a national court could decline to give effect to their judgments on the basis of lack of compliance with European legal norms such as those embodied in Article 6 ECHR (right to fair trial). Before recent events, although national courts had always accepted the judicial character of the Boards, Board members took the view, supported by some commentators, that more autonomy was desirable. However, a proposal to increase the autonomy of the Boards had been shelved by the current administration. 

It was clear that action needed to be taken, but new proposals from the President to modify the administrative structure of the Boards seemed to conflate independence with efficiency, and also addressed other matters, such as the management of possible conflicts of interest of Board members, which had never in reality seemed to be a problem. There was more concern with the appearance of independence, such as the physical location of the Boards, than independence itself. 

These developments caused the wider IP community in Europe to take an interest in the situation. The EPI, national patent attorney associations, and industry bodies, as well as the Boards themselves, made representations to the President and, when these seemed to fall on deaf ears, to the AC directly. Now, finally, it seems that consideration will be given to an autonomous structure for the Boards. But consideration also needs to be given to the wider governance of the Organisation. The EPO is a transnational body with immunity from jurisdiction and execution (which led to the moniker “Eponia” - a quasi-State). It is free from both direct political control and judicial review. Therefore, the oversight afforded by the AC is the only check of the executive. Can it now be considered that the AC structure is capable of providing resilient governance, when in many cases this may involve biting the hand that feeds them? Something more robust is surely required. 

Where does the answer lie? The closest comparable institution is OHIM, which does not provide a model since it is an EU body, and its decisions are subject to two instances of judicial appeal. The EPO represents a unique problem and demands a unique solution, which must now be found. 

© The Author(s) (2016). Published by Oxford University Press. All rights reserved.