The Problem and Solution Approach - Basic Case Law and Recent Development (II)[1]

Michael M. Fischer (DE), European Patent Attorney

B. Objective Technical Problem

As a next step, the distinguishing features between the appropriate starting point and the subject-matter of the claim are determined. Then, the technical effect achieved by these distinguishing features is determined and an objective technical problem is formulated based on the technical effect. It is important to note that the formulated objective technical problem must not provide pointers to the claimed solution.[2] The objective technical problem need not be the subjective technical problem mentioned in the background section of the patent application. Hence, the objective technical problem can be reformulated. If a technical effect cannot be demonstrated, the problem must be reformulated.[3]

Before the EPO, the presence of a technical effect is essential to the acknowledgement of an inventive step. In this context, the decision T 2044/09 should be cited in which the Board noted that "the mere fact that the claimed subject-matter was not novel over the prior art, even when combining document, was not sufficient to render it inventive. In fact in the absence of a proven effect in comparison to the prior art, it was considered that this must be regarded as an arbitrary non-functional modification of the prior art. Even if there was no pointer or suggestion in the prior art towards the addition of a distinguishing feature, if said modification was not linked to a particular functionality, then it could not per se constitute the basis for acknowledging an inventive step".

Hence, when drafting a European patent application, care should be taken to not only mention a technical problem or a technical effect in the background section of the patent application which normally relates to the overall problem addressed in the patent application but also to mention the technical effects associated with features mentioned in the dependent claims and/or in the description. If the technical effect is not mentioned in the application, it may be more difficult to convince the Examining Division that the technical effect (merely alleged in examination proceedings) is actually achieved. Reference is made to GL G-VII, 5.2 which states that "It is also possible to rely on new effects submitted subsequently during the proceedings by the applicant, provided that the skilled person would recognise these effects as implied by or related to the technical problem initially suggested". While it is common practice in the field of pharmacy to file results of clinical studies performed after the filing of the application in order to demonstrate a technical effect, applicants in other technical areas often do not seem to contemplate this option. For example, if the inventor has published - after filing the patent application - an article in which the technical effect is better explained than in the patent application itself, this article can be adduced in order to demonstrate the technical effect before the EPO. "In T 440/91 }} the Board pointed out that R. 27 EPC 1973 did not rule out the possibility of additional advantages - not themselves mentioned in the application as filed but relating to a mentioned field of use - being furnished subsequently in support of patentability for the purposes of Art. 52(1) EPC 1973, as such advantages did not alter the character of the invention. Thus, the character of the invention was not altered if the technical problem specified in the application as filed was supplemented by such advantages, since the skilled person might consider them on account of their close technical relationship to the original problem (see also T 1062/93). The Board made a distinction with regard to the situation in T 386/89 and T 344/89, where there was no such technical relationship. In T 386/89 the Board had found that the solution to the technical problem derivable from the application as filed was in no way associated with a technical effect subsequently invoked. This additional effect had thus not been taken into consideration. The alleged effect of a described feature could not be taken into account when determining the problem underlying the invention for the purpose of assessing inventive step, if it could not be deduced by the skilled person from the application as filed considered in relation to the closest prior art. Similarly in T 344/89, the Board had refused to take account of a subsequently invoked technical effect on the grounds that to do so would have altered the character of the invention (T 532/00, T 845/02, T 2179/08)"[4]. If a technical effect is purported that is associated with a range of values, it should be noted that "an effect cannot be retained if the promised result is not attainable throughout the entire range covered by the claimed subject matter. Therefore, the technical problem needed to be redefined in a less ambitious way (T 626/90, T 1057/04, T 824/07)"[5]. Hence, should a first application not include the technical effects associated with individual features, it should be legitimate to incorporate these technical effects - taking into account the restrictions set forth in the decisions above - into the description of a second application to be filed with the EPO and claiming priority from the first application in order to facilitate its prosecution. Since this addition of technical features does not affect the feature combinations recited in the claims, this measure should not jeopardise the validity of the priority claim. A slightly different question is whether the claimed subject-matter solves the problem to be solved. In this context, the Boards held hat "post-published evidence to support that the claimed subject-matter solves the problem to be solved is taken into account if it is already credible from the disclosure in the patent [or patent application] that the problem is indeed solved. In other words, supplementary post-published evidence may not serve as the sole basis to establish that the problem is solved (T 1329/04, T 415/11)"[6].

At this point, it is worthwhile taking a look across the big pond where no other decision has shaken the patent world in recent years more than "Alice Corp. v. CLS Bank International" rendered by the US Supreme Court in 2014. The patents in suit were held to be invalid because the claims were drawn to an abstract idea, and implementing those claims on a computer was not enough to transform that idea into patentable subject matter. In short, this decision may be interpreted in a way that subject-matter (in this case software) is only patentable if it achieves a technical effect. As harsh and consequential[7] as this decision may (or may not, if overturned) be for the patent world in the USA, it could constitute a harmonisation between the jurisprudence of the USA and the EPO. The author of this article appreciates the EPO's concentration onto a technical effect. Firstly, it makes sure that a patent is granted only for "technical" solutions (which leads, however, to the problem of the meaning of the term "technical"). Secondly, a patent is granted in return to the applicant making the invention public which can then be further developed by others. Hence, if it is not (at least implicitly) clear what the invention achieves because it is nothing but a combination of seemingly arbitrary features, then the description has to be considered to be incomplete and may be of little or no value to the public since the public does not know what the invention is for (see also the requirement of R. 42 (1) (c) EPC).

If the objective technical problem formulated based on the distinguishing features leads to a problem that cannot occur at the selected appropriate starting point, the selected starting point is inappropriate (see T 513/00). At least one cannot show in a logical chain of arguments that starting from this document the subject-matter of the claim can be arrived at in an obvious manner. When attempting to show that the subject-matter of a claim is not inventive using the problem and solution approach, it is advisable to countercheck whether the problem formulated is a problem that the selected appropriate starting point actually has. Otherwise the chain of argumentation becomes illogical.

As already mentioned above, if one has chosen a closest prior art document from a different genus, then it is difficult to formulate a reasonable problem which does not point to the solution because the problem would have to be based on the generic difference. If we consider a military helmet having the features a, b and c and the closest prior art is a worker's safety helmet having the same features a, b and c. The problem cannot be formulated as how to modify the safety helmet to also be able in military actions directly points to the solution. How to modify the safety helmet to be usable in a different environment would be too broadly formulated.

This leads to the question on how specific the objective technical problem should be formulated. In T 1019/99, the Board held that it is established case law that the objective technical problem to be used in the problem and solution approach is to be formulated so that it does not anticipate or contain pointers to the solution. This constrains the specificity of the formulation. However, there is also a constraint on the amount that the formulation can "back off" from this specificity, i.e. a constraint on the generality of the problem. The problem can be no more general than the disclosure of the prior art allows. Otherwise, a problem could be formulated so generally as to circumvent indications in a prior art document towards the claimed solution. Thus the correct procedure for formulating the problem is to choose a problem based on the technical effect of exactly those features distinguishing the claim from the prior art that is as specific as possible without containing elements or pointers to the solution.

A. Obviousness

Following the gedankenexperiment of the problem and solution approach, by determining the appropriate starting point and the objective technical problem, a hypothetical situation is defined in which the fictitious skilled person[8], a purely fictitious person with a certain knowledge and abilities, could have been.

(Hypothetical) Situation = Appropriate Starting Point + Objective Technical Problem

While the first two steps of the problem and solution approach are made in full knowledge of the invention (i.e. based on hindsight), it is now important to erase the knowledge of the invention from one's mind in order to be able to assess the question of obviousness without hindsight.

In practice, this situation could be compared with a development process in which a development manager gives a development engineer or team of engineers (skilled person(s)) the order to further develop a given product in a certain respect (based on a functional specification).[9] The question is whether the skilled person in the situation above could and would have found the solution to the objective technical problem, for example in a second document from the prior art, or not (could-would approach). Hence, a skilled person may perform the role of a guinea pig by means of which it is tested whether it reaches - in a given situation - the target (the subject-matter of the claim) or not. It is important to note that the skilled person neither selects the closest prior art nor formulates the problem but is presented with both of them.

The assessment of whether the further development of the prior art is obvious or not is not determined by what the skilled person could have done but by what he would have done. It should be noted that it is completely irrelevant in which situation the inventor actually was.

"That it was theoretically possible for the skilled person to arrive at the invention simply means that he could have used the requisite technical means. If, however, it is to be established that he would actually have used them, it must be possible to ascertain a pointer in the prior art which would have prompted him to do so (T 1317/08)"[10].

Although the "raising the bar" initiative a few years ago only affected the European Patent Office and not the Boards of Appeal, some Boards of Appeal came to the conclusion that even an implicit prompting or implicitly recognisable incentive is sufficient to show that the skilled person would have combined the elements from the prior art (see T 257/98 and T 35/04). This must have been the case for the skilled person before the filing or priority date valid for the claim under examination.

In T 1014/07 the Board stated that the mere existence of teachings in the prior art is not a conclusive reason for explaining that the skilled person would have combined these teachings in order to solve the problem that he or she is confronted with. As a further reason for denying an inventive step for the claimed subject-matter the examining division indicated that "[t]he mere fact that a known biochemical step has been added to a known chemical process of oxidation cannot be considered in itself inventive in the absence of a special feature or advantage of the combined use of biochemical and chemical processes". However, for the determination of the obviousness or non-obviousness of claimed subject-matter, it is not decisive that teachings are known - it must be decided whether or not the skilled person would have combined the known teachings such as to arrive at the claimed subject-matter when attempting to solve the underlying technical problem. Thus, in contrast to the examining division's view, the combination of known teachings may result in non-obvious subject-matter, namely when the skilled person is not motivated, for example by promptings in the prior art, to make such a combination. Under these circumstances the presence of any special effect arising from the combination is not necessary to establish an inventive step.

While it appears that the "could-would approach" is sometimes only applied to the question whether there was an incentive/prompting to apply the teaching of a secondary document to the teaching of the appropriate starting point, the author of the article suggests the following more comprehensive scheme:

Could? Would?
Is the solution to the problem available somewhere in the prior art? (Can a passage of a prior art document be read under the distinguishing features?) Is the document from the same, a neighboring or a broader general technical field of the invention? E.g. the technical fields of automotive engineering and avionics are considered to be neighboring technical fields because they involved similar problems (**T 1910/11**). In some cases, the question above can be answered based on the International Patent Classification (or any other patent classification system).
Are there no impediments (inherent incompatibilities, technical difficulties, necessity of major adaptations, teaching-away) that would prevent the skilled person from applying the solution to the appropriate starting point?[11]
Is the skilled person prompted to apply the solution to the appropriate starting point? (Would the skilled person recognize that the passage solves the problem? E.g. because it also mentions the technical effect associated therewith.) A typical prompting to apply the teaching to an appropriate starting point is if the second document does not only mention the features of the solution but also the technical effect obtained thereby.
Solution available? In a suitable context?

While the question of "could" merely refers to the fact whether something falling under the features of the claimed solution was somewhere available in the prior art, the question of "would" deals with the question whether the skilled person would have found the solution and applied it to the appropriate starting point. In short:

Could : Would = Solution : Context

In other words, "could" refers to the theoretical possibility of finding the solution while "would" denotes whether the skilled person would have practically found the solution in view of the context in which the solution is presented. Typically, the transfer of a known solution in a suitable context to an appropriate starting point is considered to be a further development that the skilled person could and would have achieved. In T 142/84[12], the Board argued in a such an archetypal way: "The respondents are of course correct when they state that the mere fact that a skilled person would not encounter insurmountable difficulties in providing a characterising feature of a claim does not lead (necessarily) to the conclusion that there is no inventive step. However, when the feature is known from a document in the same specialised field, and solves the same problem, then the fact that the skilled person would not encounter insurmountable difficulties in applying this known feature to a known apparatus from a second document does demonstrate that the documents are not conflicting (see T 02/81, OJ EPO 10/1982, 401), and that an inventive step is lacking. The problem solved does not have to be stated expressis verbis in the prior art. The respondents refer further to the earlier decision T 39/82 OJ EPO 11/1982, 423. In that case it was decided that the problems to be respectively solved with a known measure in the known case and in the case to be decided must be taken into account. Since the problems differed fundamentally from one another it could not be considered obvious for the skilled person to use this known measure in a different context. Since however the purpose of the features known from US-A-4 100 657 is the same as in the present case, it cannot be denied that the problems do not differ fundamentally and this prior art gave the skilled person an indication for applying these features in the present case."

In yet other words, the could-would approach tests in how far two documents/teachings fit with each other. This is sometimes compared with a jigsaw puzzle[13] with the documents being the pieces of the jigsaw puzzle. As mentioned above, it is crucial that at least one of the documents contains an incentive/prompting so that its teaching will be applied to the teaching of another document which implies that "mosaic-like combinations will normally not be persuasive"[14]. However, one must not forget that the prior art can also be represented by a "prior use" which normally - by its nature - does not contain any incentive/prompting.

While the skilled person needs an incentive to apply the teaching of a second prior art item to that of an appropriate starting point, the Guidelines state under G-VII, 6 (iii) that "it would normally be obvious to combine with a prior art document a well-known textbook or standard dictionary; this is only a special case of the general proposition that it is obvious to combine the teaching of one or more documents with the common general knowledge in the art". This obviously means that no incentive/prompting is needed to apply the skilled person's common general knowledge to an appropriate starting point. Thus, according to the Guidelines, the difference between a normal prior art document and the skilled person's common general knowledge appears to be that the common general knowledge as the skilled person's mental furniture is very present in his brain and therefore the hurdle that the skilled person applies it to a teaching of another document is very low or not existing (= no incentive is needed). However, care has to be taken in order to identify what is actually known from the common general knowledge and how the skilled person would apply it to the teaching of a prior art document. It is important to note that the skilled person's common general knowledge may not be applied in a certain (target-oriented, purposeful) direction to arrive at the claimed subject-matter. This would be considered an unallowable ex-post-facto analysis.

In T 1471/11, the Board held that "the argument of the appellant must fail that neither claim 1 nor the description of the patent in suit define the claimed arrangement for lubrication to such an extent that it can be understood without having recourse to the general technical knowledge and understanding of the skilled person. With that general technical knowledge in mind, in addition to the teaching of the available documents, the examination of inventive step would necessarily lead to the conclusion that the claimed subject-matter does not involve an inventive step. The reason is that even if it is correct that general technical knowledge and practice needs to be taken into account in order to reduce the arrangement for lubricating defined by claim 1 to practice, the decisive direction in which this general technical knowledge is to be applied to arrive at what is claimed, still needs to be derivable from some teaching or knowledge"[15]. The Board set forth a similar argumentation in T 386/12 and T 1426/10.

This is different from the use of the common general knowledge in the field of "sufficiency of disclosure" (Art. 83 EPC) where the skilled person would use his common general knowledge in a target-oriented way to determine whether the invention is sufficiently disclosed by the application as a whole. He is in the position to use his common general knowledge in a target-oriented way because he knows the prior art and the invention, while the skilled person in the assessment of inventive step only knows the prior art. However, in both assessments, "the same level of skill has to be applied (T 60/89 and T 373/94)"[16]. In slightly other words: "The skilled person when assessing sufficiency of disclosure of a patent has knowledge of the invention as disclosed, i.e. knowledge of both the prior art, the problem and its solution, and is aware of documents cited in the patent and the common general knowledge in the art" (T 6/84, T 171/84)[17]. With both decisions being quite old and search engines becoming more and more powerful, it would be interesting to see if e.g. a novel, unusual or special term in a claim of a patent application, the term not being part of the skilled person's common general knowledge (i.e. cannot be found in standard textbooks, etc.) and the patent application neither containing any explanations nor references to other documents, would make the application not meet the requirement of "Sufficiency of Disclosure" even if an explanation of the term could easily be found using a search engine. The decision T 580/88 also appears to be quite harsh in this respect.

In T 1641/11, the Board held that the assertion that something was part of the common general knowledge therefore needed only to be substantiated if challenged by another party or the EPO. "Where an assertion that something was part of the common general knowledge is challenged, the person making the assertion must provide proof that the alleged subject-matter indeed forms part of the common general knowledge (T 438/97, T 329/04, T 941/04, T 690/06)"[18].

D. Further Considerations

The following schematic example wants to demonstrate why it does not make sense to focus on one closest prior art document.

Doc: \ Claim features: A B C D E
D1: a B c
D2: a B c d
D3: d e
D4: e

(The lowercase letters denote special features that anticipate the features denoted by the corresponding uppercase letters.)

Both documents D1 and D2 qualify as appropriate starting points (same purpose as the claim, etc.). However, since D2 has one more feature in common with the claim, it could be considered to be the (one and only) closest prior art document. Although D2 is per se closer to the claim than D1, it may be that there are incompatibilities (e.g. mechanical incompatibilities, incompatible dimensions) between D2 and D3 and D2 and D4 such that the skilled person would neither apply the teaching of D3 nor the teaching of D4 to that of D2. Hence, the (wrong) conclusion would be that starting from the closest prior art D2, the skilled person would not have arrived at the subject-matter of the claim in an obvious manner. However, there may not be incompatibilities between document D1 and D3 and the skilled person could and would apply the teaching of D3 to that of D1, thereby arriving at the subject-matter of the claim in an obvious manner. Since there exists one way to arrive at the subject-matter of the claims, it has been shown that claim 1 does not involve an inventive step. Since the question whether one arrives at the subject-matter of the claim in an obvious way also depends on how well the primary reference fits together with the secondary reference, documents must not be prematurely disregarded as appropriate starting points.

Applying the problem and solution approach is sometimes compared with mountaineering[19]. Two hikers A and B, of ordinary skill, not Reinhold Messner, (person of ordinary skill in the art, no Nobel Prize winner) want to hike to the summit (invention/ subject-matter of claim) of Mount Inv. From their starting point, they both see the summit they want to reach (selection of appropriate starting point is made in knowledge of the invention). Hiker A takes a trail (a first appropriate starting) which is very steep and goes very straight into the direction of the summit (same purpose). This trail appears to be very promising since, as far as he can see, it almost reaches the summit (only one feature missing ). Hiker B takes another trail (a second appropriate starting point) which also goes in the direction of the summit but is less steep. However, he can only see that his trail ends somewhere in the forest at half the height of the summit (some more features missing ). When hiker A reaches the end of his trail, he notices that the trail abruptly ends and that he would have to climb (perform an inventive step) the last few meters from there to reach the summit. Unfortunately, there is no signpost (pointer, incentive/prompting) showing him how he could alternatively reach the summit by hiking. He also looks into his standard mountain survival guide (common general knowledge - a hiking map would not be a good analogon under the assumption that the common general knowledge must not be used target-oriented) that he always carries with himself. When hiker B reaches the end of his trail, he has only reached half the height of the summit, but he notices a signpost (pointer to another document) that indicates that several other trails (further documents possibly containing a solution) start from a place very close (neighboring technical field) from here. He follows the signpost and arrives at a point where he sees different signposts (incentives/promptings to different documents), one of them (incentive/prompting to the document disclosing the solution) indicating that this hiking trail - ideal for the ordinary hiker, no climbing necessary - leads to the summit of the mountain. The hiker follows this trail (second document) and easily arrives at the summit without any climbing. A trail which appears at first glance less promising than another trail may lead to the summit while the other trail may not. In the language of the problem and solution approach, this means that not any document that appears to come closer to the subject-matter of the claim than all other documents is suitable to show that the subject-matter of the claim is inventive, while a not so close document is ideally complemented by another document which shows that the subject-matter of the claims is indeed inventive.

E. Alternatives

The EPO lives and breathes the problem and solution approach. Hence, the decision T 465/92 received a lot of attention because already its headnote stated that the problem and solution approach is no more than one possible route for the assessment of inventiveness. Accordingly, its use is not the only possibly approach when deciding on inventiveness under Article 56 EPC. In the Case Law Book 6th edition, this decision has been classified as "a one-off decision". Interestingly, in the 7th edition, this remark has been replaced with the sentence that the Board "took the view that all of the seven cited documents came equally close to the invention". Possibly, this decision, which has often been categorized as a heretical decision not to be followed, was an early decision to recognize the issue of referring to one closest prior document, which was not possible in the present case, and therefore decided not to apply the problem and solution approach. Possibly, the members of the Board had a (formal) problem with the superlative notion of a one and only "closest prior art document" and therefore declined applying the problem and solution approach. Maybe, the amendment of the Case Law Book is a late and silent rehabilitation of this decision which partly anticipated the decisions T 967/97, T 558/00, T 21/08, T 308/09 and T 1289/09 that have now found their way into the last version of the Guidelines.

In T 939/92 the Board of Appeal referred to the decision T 465/92. Although it was held in No. 9.1 of the reasons of this decision that the "problem and solution approach" is not a sine qua non for the determination of inventiveness by the EPO, it follows, in the Board's judgment, from the detailed explanations given in the following points 9.2 to 9.6 of the reasons that in that case the Board refrained from identifying a certain document as "closest state of the art" and formulating a "technical problem" on the basis of such a state of the art. In the present case, however, the question of selecting a particular document as "closest state of the art" is not at issue. However, in decision T 465/92 the Board considered the results which had been objectively achieved by the claimed invention, and then proceeded, on that basis, to decide whether or not the cited state of the art, as a whole, would have suggested to the skilled person that these results could be achieved in the way indicated in the patent under consideration.

In T 188/09 the Board stated that the "problem and solution approach" is regularly applied as an auxiliary means by the instances of the European Patent Office in the course of deciding whether or not claimed subject-matter fulfils the requirements of Article 56 EPC. The appellant, referring to decision T 465/92 of 26 November 1993, observed that there are however cases where the "problem and solution approach" hinders, rather than assists answering the question of whether claimed subject-matter is obvious over the prior art.

In decision T 465/92 the Board explicitly decided not to use the "problem and solution approach" (see points 6 to 9.6 of the Reasons). Thus, the Board understands the appellant's reference to this decision as an argument that the present case is one where the "problem and solution approach" should not be used.

The Board notes first that whatever approach is applied as an auxiliary means for the evaluation of inventive step of claimed subject-matter, in a given evidential situation it must provide the same result, be it either in favour of or against inventive step. Therefore, in the present case, even if the "problem and solution approach" was applied, the decision on inventiveness should be the same as if it was not used.

Moreover, according to the reasons of decision T 465/92, the Board decided to avoid the "problem and solution approach" because it considered that the seven relevant citations were all equally close to the claimed invention and that therefore, the opponent "ought not to be tied down by having to select one or more citations as being closer than others" (see points 9.3 and 9.4 of the Reasons). Consequently, the Board considered them all individually without selecting one as the closest prior art document.

The Board in decision T 465/92 also notes in point 9.5 of the Reasons that there may be situations which "can result in a complicated multi-step reasoning where the facts were clear, either for or against inventiveness. Thus, if an inventions breaks new ground it may suffice to say that there is no close prior art rather than constructing a problem based on what is tenuously regarded as the closest prior art."

None of the circumstances for the avoidance of the classical "problem and solution approach" referred to in decision T 465/92 is present in the case at hand [i.e. **T 188/09**], i.e. neither can the claimed subject-matter be considered as breaking new ground, since document D4 describes a G-protein coupled receptor specifically located in taste cells nor is there a large number of equally close prior art documents (see points 9 to 13 below).

Thus, having considered the rationale in decision T 465/92 the present Board does not see a reason to apply the approach adopted by the Board in that decision rather than the classical "problem and solution approach".

F. Conclusion

The application of the problem and solution approach has evolved over the years. However, the problem and solution approach is still - and more than ever - the one and only prayer before the EPO and has pushed all other approaches into the field of heresy. The problem and solution approach is even applied outside the scope of the EPC since the PCT International Search and Preliminary Examination Guidelines also suggest applying this approach[20]. Although the problem and solution approach appears to be algorithmic[21] in nature and hundreds of decisions of the Boards of Appeals give advice on how to apply the approach in many cases, its outcome is in the eyes of the author of this article not always predictable. Ultimately, the question of "inventive step" is a legal question and assessing inventive step is an act of judging which involves subjective elements. In patent law and in many other legal fields the roman legal principle "Iudex non calculat." still applies. Nevertheless, the problem and solution approach is a systematic approach and that alone may be the reason for its success and longevity.

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  1. This is the second part of an article that is based on a talk held by the author on September 8, 2015 at the European Patent Experts' Forum (EuPEX) in Munich. The first part was published in epi Information 2/2016.
  2. T 641/00 suggests to put all non-technical features into the problem in order to avoid that they provide pointers to the solution.
  3. Handout of presentation "Problem/Solution Approach to Inventive Step and Challenging Cases" held by Graham Ashley, Chairman of a Technical Board of Appeal, at the conference "Boards of Appeal and key decision" on November 26/27, 2015 in Munich
  4. Case Law of the Boards of Appeal, section I.D, 4.4.2, 7th edition, 2013
  5. Case Law of the Boards of Appeal, section I.D, 4.4.2, 7th edition, 2013
  6. Case Law of the Boards of Appeal, section I.D.4.6, 7th edition, 2013
  7. The graph available at shows that the USPTO issued fewer than half the number after Alice that it had issued per month during the period prior to Alice. At the same time, however, the issuance of other types of software patents rose. (
  8. A detailled definition of the skilled person, his abilities and his knowledge in different fields of technology is omitted. Not many decisions on this seem to have been issued any time recently.
  9. Hoekstra, J., "Methodology for Paper C - Training for the European Qualifying Examination", Deltapatents, October 2009, p.151
  10. Case Law of the Boards of Appeal, section I.D.5, 7th edition, 2013
  11. Of course, the question whether two teachings are compatible with each other is determined based on the concrete disclosure of the two documents and not on the abstraction level of the claims since the skilled person does not know the subject-matter of the claim.
  12. Handout of presentation "Problem/Solution Approach to Inventive Step and Challenging Cases" held by Graham Ashley, Chairman of a Technical Board of Appeal, at the conference "Boards of Appeal and key decision" on November 26/27, 2015 in Munich
  13. Hoekstra, J., "Methodology for Paper C - Training for the European Qualifying Examination", Deltapatents, October 2009, p.154 and cover page
  14. section 3.3 of
  15. The Federal Court of Justice of Germany came to a similar (possibly even broader) conclusion in its decision Xa ZR 56/05 "Airbag-Auslösesteuerung": "The mere fact that a teaching belongs to the skilled person's common general knowledge does not yet prove that it was obvious for the skilled person to employ this teaching in order to solve a specific technical problem". A further decision in this context is the decision X ZR 139/10 "Farbversorgungssystem" in which the Federal Court of Justice came to the conclusion that the skilled person would have applied a solution from his common general knowledge "because using its functionality was objectively expedient and there were no special circumstances rendering such use impossible, difficult or otherwise impracticable from a specialist point of view".
  16. Case Law of the Boards of Appeal, section I.D.8.3, 7th edition, 2013
  17. Visser, D., "The Annotated European Patent Convention", 21st edition, 2013, p.174, section 2.2
  18. Case Law of the Boards of Appeal, Section I.D.8.3, 7th edition, 2013
  19. see for instance:
  20. "One specific method of assessing inventive step might be to apply the so called "problem-solution approach", PCT International Search and Preliminary Examination Guidelines as in force from October 1, 2015, Appendix to Chapter 13, page 117,
  21. Not surprising in view of the high number of scientifically educated people in patent law. Not surprising either if the search tools used by the EPO Examiners already supported the problem and solution approach by e.g. suggesting documents from the same, broader or neighbouring technical fields which in combination anticipate all the features of a claim.