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. 

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