EPO board of appeal raps examiners for not using their problem and solution approach

As European patent attorneys we have all – at least at one time or another – tried to argue that there are other ways to successfully demonstrate inventive step than to simply follow the EPO’s rather prescriptive problem and solution (P&S) model. 

British patent attorneys, in particular, come from a background where common general knowledge plays an absolutely pivotal role in inventive step, which is something that barely even enters inventive step considerations at the EPO, at least in the examination phase. 

We also know how uncomfortable many of our US clients can find it to admit to one document as closest prior art and to identify the advantages of the claimed invention as compared with that document, as demanded by the P&S process. 

It can be tempting to think that there must be something outside of the P&S framework that would allow attorneys to portray the invention in a much more favourable light. Is their value in arguing that it is high time to try arguing a different tactic? Probably not, because, generally speaking and in my experience, examiners prefer we follow the tried and trusted P&S approach - except, that is, the examiners for European patent application 10173564.5 who refused the application and also refused to follow P&S despite the applicant asking them (and asking very nicely) to do so. The refusal formed the basis for board of appeal decision T 0978/14.

In that instance the examining division considered the P&S approach was inappropriate because it would be difficult to formulate a realistic technical problem. The examiners reasoned that the guidelines for examination foresees exceptional deviation from the P&S approach. 

However it appears The Board did not think that an exception was necessary so ruled that the P&S approach should always be followed where it can be. In particular, the Board considered that P&S is regularly applied by the departments of the EPO in the course of deciding whether or not claimed subject-matter is inventive and was primarily developed to ensure objective assessment of inventive step and avoid hindsight analysis of the prior art. The Board found it rather easy to formulate a realistic technical problem and thus saw “no reason not to apply the standard problem solution approach”.

Practice points

In this case, even the examiners are being told that P&S is a must. From that, we can probably conclude that taking an alternative route to arguing in favour of inventive step is unlikely to make proceedings to grant more efficient, irrespective of how reasonable the alternative inventive step argument is. 

My view is that the straitjacket of the P&S approach shouldn’t necessarily be seen in a negative way. Often, it allows for a relatively simple inventive step argument where neither the examiner’s closest prior art document, nor the secondary reference, discloses a particular claimed feature. 

In most cases P&S does not allow for a third reference to be brought in to the inventive step objection, nor the addition of common general knowledge. In the majority of cases, at least in my fields of work (mechanical, physics, software), the argument can be boiled down to something as simple as feature 1 from D1 + feature 2 from D2 does not equal feature 3 of the claimed invention and therefore the claimed invention is non-obvious. In those cases, an uncontroversial, and concise, discussion of the “objective technical problem” can be had, and grant can be secured without undue admissions on the file and without any unusual delay.