National Law University OdishaIntellectual Property Rights-I

Test of Inventiveness in European Patent Office

Submitted by:Aishwarya Singh[2011/BA LLB/005]Prakhar Raja Bishnoi [2011/BA LLB/38]Table of Contents

Index of Authorities3Research Paper5Evolution of Patent Law in Europe5Formation of European Patent Office5An Invention: Definition and Scope6Problem-Solution Approach9Closest Prior Art10Objective Technical Problem11Person Skilled In the Art11Windsurfing test- A different approach in United Kingdom12Problem-Solution Approach: Is it Sufficient to judge inventiveness?13Conclusion16

Index of AuthoritiesCasesActavis UK Ltd v Novartis AG16DSM NVs Patent12G 1/95 Fresh Grounds of Opposition/ DE LA Rue6T 106/84, Packing Machine/Michaelson13T 191/82, Baled Waste Paper Product/Fibre Chem14T 1/80 Carbonless Copying Paper/Bayer9T 119/82, Deodorant Products/Unilever15T 15/81 Testing Device/KRAFTWERK10T 154/04 Estimating Sales Activity/ DUNS LICENSING ASSOCIATES6T 181/82 Spiro Compounds/ CIBA GEIGY7T 26/81, Containers/ICI9T 26/81, Containers/Imperial Chemical Industries15T 271/84, Air Products/Removal of H2S and COS14T 38/84 , Oxidation of Toluenel Stamicarbon14T 39/93 Polymer Powders/ COMVIK10T 441/93 Cloning in Kluyveromyces/GIST BROCADES8T 5/81 Hollow thermoplastics/ SOLVAY10T 564/89 Photosensitive Polymer Composition/ TORAY9T 677/91 Ion Traps/ FINNIGAN10T 694/92 Modifying Plant Cells/MYCOGEN10T 890/02 Chemeric gene7T1/80, Carbonless Copying Paper9T111/00 specifically for DNA sequences9T13/84(SPERRY/Reformulation of the problem)11T20/81, ArylozyBenzaldyhyes9T226/88 Hoechst AG [1988]9T24/81 (BASF/Metal refining)11T939/92. Triazoles9Windsurfing International Inc. v Tabur Marine12

StatutesEuropean Patent Convention6TRIPS Agreement5ArticlesFriedrich7& Karl Beier, The European Patent System8G. Paterson, A concise guide to European Patents: Law and practice10John Richards, 10 Years of Substantive Law Development in European Patent Office13Melanie J. Howlett & Andrew F. Christie, An Analysis of the Approach of the European, Japanese and United States Patent Offices to Patenting Partial DNA Sequences5Robert P Merges, Patent Law and Property: Cases and Materials5World Intellectual Property PCT Applicants Guide5Zorina Khan, Intellectual Property and Economic Development: Lessons from American and European History5BooksFysh J., The Modern Law of Patents7Judge Fysh, The Modern Law of Patents8Stanley, The Future Of Inventive Step In Patent Law,18

Research PaperEvolution of Patent Law in EuropeAfter enactment of TRIPS agreement for a product to be granted patent each country has to apply the same criteria-novelty, non-obviousness and utility-to determine whether an invention is eligible to be protected by a patent.[footnoteRef:1] The present state of play as to universal patenting is that a designer who needs legitimate security in diverse nations should seek a patent in every ward. Once a patent application has been lodged at the relevant patent offices, each office undertakes its own examination of the application.[footnoteRef:2] Although similar patentability thresholds apply, each office conducts its own search for prior art and uses different tests to examine the size of the inventive step involved in the invention.[footnoteRef:3] Thus, it is possible that a single invention that results in patent applications in multiple jurisdictions will be granted a patent by one office and rejected by others. [1: TRIPS Agreement, Article 27.] [2: 2 World Intellectual Property PCT Applicants Guide, 17 (2004), http://www.wipo.int/pct/guide/en/gdvol2/pdf/gdvol2.pdf [hereinafter PCT APPLICANT's GUIDE].] [3: Melanie J. Howlett & Andrew F. Christie, An Analysis of the Approach of the European, Japanese and United States Patent Offices to Patenting Partial DNA Sequences (ESTs), 34 INT'L REV. INDUS. PROP. & COPYRIGHT L. (2003) 581 ]

The patent system has undergone substantial changes since its inception.[footnoteRef:4] While in its origins, society's benefit was regarded as the introduction of a new art or technology; by the late eighteenth century the economic role of patents shifted the emphasis to the dissemination of new and useful information.[footnoteRef:5] During the last century, a new shift in emphasis took place towards a system mainly concerned with the encouragement of the investment required to produce and exploit inventions. [4: Zorina Khan, Intellectual Property and Economic Development: Lessons from American and European History , Available at: iprcommission.org] [5: Robert P Merges, Patent Law and Property: Cases and Materials 6 (1992)]

Formation of European Patent OfficeThe international patent body that has undoubtedly played the most substantive and sustained role to date is the European Patent Oce (EPO).[footnoteRef:6] The European Patent Convention, according to which the EPO was founded, provides a single patent grant procedure, but not yet a single patent. After grant, the European patent becomes a number (bundle) of national patents. EPO patent grants are issued for inventions that are novel, mark an inventive step, are commercially applicable, and are not excluded from patentability for other reasons.[footnoteRef:7] [6: The World Intellectual Property Organisation, which traces its origin back as far as the Paris Conventionof 1883, allows applicants to le applications in multiple countries under the Patent Cooperation Treaty.] [7: Article 52 European Patent Convention. [Hereinafter, EPC]]

The idea of developing a harmonized or unified patent system in Europe originated as early as 1949 with the Council of Europe. The underlying rationale was the general wish to contribute to harmonizing national law, to better understanding and improved relations between the peoples of Europe, as well as the specific understanding that the fragmented national approach to protect technical inventions was contrary to good sense and rational economic behaviour. The Convention establishes an European patent organization which has its seat in Munich and consists of the European Patent Office (EPO) and the Administrative Council. The EPO is an international administrative agency with a staff whose members come from all of the contracting states. The convention requires a patent to be centrally applicable. Part II of the Munich Convention contains the provisions of substantive patent law of which the chapter on patentability[footnoteRef:8] is the most important one. Under Article 52(1), European patents shall be granted for inventions which are new, involve an inventive step, and are susceptible of industrial applications. Since the basic provisions on patentability mention only these four criteria, namely: invention, novelty, inventive step or non-obviousness, and industrial applicability, and are to be understood as containing an exhaustive enumeration, no other criteria of patentability can be applied to European patent applications. [8: Articles 52-57, EPC]

An Invention: Definition and ScopeThe term invention for many years was not particularly defined. It was only later that the definition treated as an indication of the area of patentability, rather than a statutory text to be interpreted in the usual way,[footnoteRef:9] and the definition would have been retained but for implementation of EPC. Whether something is invention is separate is something which is novel, involves an inventive step or is industrially applicable.[footnoteRef:10] An invention was not originally defined in the convention because of the lack of any meaningful agreement and it still lacks a clear definition in the case of law.[footnoteRef:11] The requirement for an inventive step is the most central of patent law. Article 56 EPC provides that, having regard to the state of the art, the invention must not be obvious to a person skilled in the art. [9: Fysh J., The Modern Law of Patents 2nd Ed. 2010 p. 16] [10: G 1/95 Fresh Grounds of Opposition/ DE LA Rue [1996] OJ EPO 615] [11: T 154/04 Estimating Sales Activity/ DUNS LICENSING ASSOCIATES [2008] OJ EPO 46]

An invention must be not only be novel but must also be shown that it involves an inventive step, put another way invention must not be obvious to a person skilled in the art who was aware of the state of art. There has long been acknowledged to be difficulty in determining, where an invention is sufficiently inventive and for many years applications were not examined by the patent office on the grounds of obviousness, the definition of inventive step is found in art. 56 of the EPC:Article 56: An invention shall be considered as involving an inventive step if, having regard to the state of art, it is not obvious to the person skilled in the art...This requirement is not simply showing technical progress has been made and to the demonstration of such progress is not enough on its own to show requisite inventiveness.[footnoteRef:12] The test that something involves an inventive step should be construed objectively , it doesnt matter who came up with the invention and it doesnt whether it was after hundreds of hours of research and trials or if it was conceived in moments. [12: T 181/82 Spiro Compounds/ CIBA GEIGY [1984] OJ EPO 401]

In Chimeric Gene,[footnoteRef:13] the board summarised what amounts to common general knowledge, a person skilled in art has to be: [13: T 890/02 Chemeric gene [2003] OJ EPO 34]

(a) the skills of such is a person is not only inclusive of knowledge in a particular field but also, his ability to look up in Encyclopaedias and handbooks etc.(b) it cannot be expected that in order to indentify this common general knowledge the skilled person will carry out any sort of comprehensive search of the literature covering virtually the whole state of art.(c) the information found must be unambiguous and usable in the direct and straightforward manner without doubts.It follows from the foregoing that for each case the common general knowledge of the skilled person working in a particular technical field must be decided on its own mertis, based on the facts and evidence of that particular case. There exists no doubt with respect to the fact that if a person skilled in a particular, he may sought assistance from people skilled in the closest prior art as well. This should not extend beyond the routine skill that would be exercised and should not involve any detailed research.[footnoteRef:14] Indeed, if the answer appears to lie in another technical field it is the practitioner in that field who should be skilled person for the purposes of the assessment of inventive step.[footnoteRef:15] [14: T 441/93 Cloning in Kluyveromyces/GIST BROCADES [1993] OJ EPO 23] [15: Judge Fysh, The Modern Law of Patents 2nd Ed. 2011, 66]

It is, therefore, no great loss if European patent law relinquishes the requirement of technical progress as an independent examination criterion and proceeds from the general presumption that an invention which is susceptible of industrial application and which is not obvious to the average man skilled in the art constitutes an enrichment of technology and thus contributes to technical progress, without the applicant's having to prove in each case that the invention is more advantageous than all other known technical solutions.The European novelty examination is based on the strictest world-wide novelty standard. According to article 54(3), the content of prior applications, which on the priority date of a later publication have not yet been published, will also belong to the state of the art. Such a rule was necessary in order to prevent double patenting. But how this objective was to be accomplished has been extraordinarily controversial in the last twenty years.[footnoteRef:16] It is not the activity of inventing which is decisive to the concept, but rather the product of that activity, the invention, and its distance from the state of the art. It is nevertheless a welcome development that this judge-made condition of patentability, whose practical importance is much greater than that of novelty, is now firmly anchored in the European patent law. According to the legal definition in article 56, an invention shall be considered to involve an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art. This definition corresponds to the definitions developed by United States and German courts for non-obviousness.[footnoteRef:17] It is to be hoped that this criterion, upon which the quality of future European patent examination will largely depend, will find reasonable interpretation by the European Patent Office and the national courts. [16: Friedrich7& Karl Beier, The European Patent System, 14 Vand. J. Transnat'l L. 1 1981 23] [17: Id. at 28]

Problem-Solution ApproachThe EPO examines whether an invention involves an inventive stop using problem and solution approach.[footnoteRef:18] The normative justification for this approach is that the description must disclose the invention so as to identify the technical problem and its solution[footnoteRef:19] and this requirement is satisfied by adopting this approach in assessing inventive step[footnoteRef:20] and preventing hindsight creeping into the assessment.[footnoteRef:21] [18: T 1/80 Carbonless Copying Paper/Bayer [1981] OJ EPO 206] [19: EPC, r 42(1)(c)] [20: T 26/81, Containers/ICI [1982] OJ EPO 211] [21: T 564/89 Photosensitive Polymer Composition/ TORAY (unpublished)]

One noticeable result of the problem and solution approach is that if a new product shows an unexpected or surprising effect (judged with reference to the state of the art), then it will be inventive because the new effect is deemed to have been the goal of the research. The notional worker would be deemed to have tried to achieve this effect and as it is not part of the state of the art and not obvious (as it is unexpected), he would fail.[footnoteRef:22] Structural originality is not taken into account when assessing inventiveness.[footnoteRef:23] Therefore, when a group of compounds fail to have any specific technical application there is no technical achievement and the problem to be solved is deemed to be the provision of further variants which in the absence of a technical motivation for doing so is obvious.[footnoteRef:24] [22: T226/88 Hoechst AG [1988] OJ EPO 11] [23: See T22/82 and T111/00 specifically for DNA sequences (unlike in the USA, where under Re Deuel 51 F.3d 1552 (Fed. Cir. 1995),] [24: T939/92. Triazoles [1992] OJ EPO 206]

In order to assess inventiveness, the EPO uses the problem and solution approach which was developed through case law.[footnoteRef:25] The Triazole case[footnoteRef:26] states the workings of this approach comprehensively: [25: T20/81, ArylozyBenzaldyhyes and T1/80, Carbonless Copying Paper [1981] OJ EPO 206] [26: T939/92. Triazoles [1992] OJ EPO 206]

Firstly, one must objectively assess the technical results achieved by the claimed subject-matter, compared with the results obtained according to the state of the art. Secondly, one assumes that the inventor in fact did try to achieve this result. This assumption is used as a basis from which to define the technical problem to solve. Thirdly, one must determine whether, for a skilled but unimaginative worker, it would have been obvious to solve the technical problems and achieve the result.In theory the test for inventive step should be the same in examination and opposition proceeding at the EPO as it is in revocation proceedings before national courts.[footnoteRef:27] The courts basically test through the eyes of a notional person skilled in the art,[footnoteRef:28] who is expert in the technical field, but possesses no inventive capacity[footnoteRef:29] and will not undertake any creative thinking. The skilled person has only average skill in the particular technical area. In relation to inventive stop the skilled person knows only the prior art, but in relation to novelty the skilled person knows the prior art and the disclosed invention.[footnoteRef:30] In any field, the skilled person is constantly preoccupied to eliminate deficiencies and achieve improvements.[footnoteRef:31] The skilled person can consult other skilled person to ask questions or the notional skilled person may actually comprise a team of skilled persons with different skills. [27: T 677/91 Ion Traps/ FINNIGAN [1997] EPOR 480] [28: T 5/81 Hollow thermoplastics/ SOLVAY [1982] OJ EPO 249] [29: T 39/93 Polymer Powders/ COMVIK [2003] OJ EPO 352] [30: T 694/92 Modifying Plant Cells/MYCOGEN [1997] OJ EPO 408] [31: T 15/81 Testing Device/KRAFTWERK [1982] OJ EPO 2]

The following approach shows two distinct features. First, the evaluation of inventiveness is objective and secondly, it is a technical assessment of the inventiveness of the advance made from the closest prior art to the claimed invention. The latter characteristic means that circumstantial evidence like commercial success or failure of others to reach the invention, plays a less significant role. These distinct characteristics will come apparent during the following analysis of the constituents of the problem and solution approach.[footnoteRef:32] [32: G. Paterson, A concise guide to European Patents: Law and practice, Sweet & Maxwell,1995, at 150-151]

Additional cases have explained this test clarified as being distinct from the hope of succeeding. For an inventive step to be denied, it must be shown that the skilled worker would reasonably predict at the outset that he would be successful, not that he hoped that he would.Closest Prior ArtThe first step of the problem solution approach consists of the assessment that what was the starting point for the invention and what prior art was closest to the claimed invention, The EPO[footnoteRef:33] declared that the most promising springboard towards the invention, which was available to the skilled man, must be used. [33: (1986)10 E.I.P.R 293. The problem and solution approach to the inventive step]

It should be emphasised at this point that although obviousness in the EPO is judged in the light of the state of the art, which consists of all knowledge available to the public, particular attention is given to that prior art which differs the least from the claimed invention, that is the closest prior art. EPOs approach to the concept of the state of the art means that the art may be in a parallel field to that of the invention. The skilled man is thus expected to be aware of the developments in neighbouring arts. The EPO declared[footnoteRef:34] that it was reasonable to expect a person skilled in the art to look for suitable parallels in neighbouring fields if it was needed. It was further explained that determination of that issue depended on whether the two fields were so closely related that the skilled man seeking solution to a given problem would naturally take into account developments in the neighbouring field [34: 1 [1986] E.P.O.R 117.]

Objective Technical ProblemAfter assessing the closest art, next step is to determine the technical problem which the invention claims to addresses or solves. The problem is formulated from the view point of the closest prior art and not the invention. The step also includes the determining the characteristics which distinguish the subject matter from the prior art and determining the technical effect of the distinguished feature. When a European patent application is filed, the invention is often described and claimed by referring to the prior art known to the inventor at the time the invention was made. In the course of examination and opposition proceedings more relevant prior art frequently presents itself. This means that the problem, which the inventor considers himself to have solved, may not be the same as the objective problem, which is formulated by following the problem and solution approach[footnoteRef:35]. [35: T13/84(SPERRY/Reformulation of the problem) [1986] E.P.O.R 289]

Person Skilled In the ArtThe final step of the problem solution approach is to judge that whether the invention involves inventive step or not and it is done by the virtue of the assessment made by the person who is skilled in the art. If the skilled person would have been prompted to modify the closest prior art in such a way as to arrive at something falling within the terms of the claims, then the invention does not involve an inventive step. It is normally regarded as part of the skill of the skilled man, to seek and recognise technical developments, which can be derived from simple combinations of documents. In BASF/Metal refining case[footnoteRef:36] it was thus established that a process, which has been developed as a result of a need, does not involve an inventive step if the need could have been readily met by an obvious combination of teachings from the state of the art. [36: T24/81 (BASF/Metal refining) [1979-85] E.P.O.R B:354]

Windsurfing test- A different approach in United KingdomIn Windsurfing International Inc. v Tabur Marine (Great Britain) Ltd[footnoteRef:37] the Court of Appeal held that the question of obviousness has to be answered, not by looking with the benefit of hindsight at what is known now and what was known at the priority date and asking whether the former flows naturally and obviously from the latter, but by hypothesizing what would have been obvious at the priority date to a person skilled in the art to which the patent in suit relates. [37: Windsurfing International Inc. v Tabur Marine (Great Britain) Ltd, [1985] RPC 59,]

Thus the court formulated a four-step approach to judging obviousness: (1) Identify the claimed inventive concept. (2) Assume the mantle of the normally skilled but unimaginative addressee in the art at the priority date and to impute to him what was, at that date, common general knowledge of the art in question.(3) Identify what, if any, differences exist between the matter cited as being known or used and the alleged invention. (4) Decide, without any knowledge of the alleged invention, whether these differences constitute steps which would have been obvious to the skilled man or whether they require any degree of invention. The first three steps of the Windsurfing test are preliminary steps to put one in the proper frame of mind to answer the question posed in the fourth step[footnoteRef:38]; and the final step of the Windsurfing test can be seen as a restatement of the statutory test for inventive step as to is the invention obvious or not [38: DSM NVs Patent [2001] RPC 35]

Problem-Solution Approach: Is it Sufficient to judge inventiveness?Prior to the European patent Convention coming into effect, considerable misgivings were expressed as the standard by which obviousness would be judged. The Convention itself states simply that for something to be patentable it must involve an inventive step and that an invention shall be considered to have an inventive step if it is not obvious to one skilled in the art.[footnoteRef:39] A hint of what was to come did, however, lay unrecognized at the time in Rule 27 (1) (d) of the Implementing Regulations that stated that the description of such an invention shall in its application for claims disclose the invention in such terms that the technical problem to which it addresses and its solution can be understood. The Problem-Solution test involves the following steps: [39: European Patent Convention Article 53(1) when read in conjunction with Article 56]

i) The formulation of an idea or of a problem to be solved (the solution being obvious once the problem is clearly stated). ii) The devising of a solution to a known problem.iii) The arrival at an insight into the cause of an observed phenomenon (the practical use of this phenomenon then being obvious).[footnoteRef:40] [40: John Richards, 10 Years of Substantive Law Development in European Patent Office, 71 J. Pat. & Trademark Off. Soc'y 1989 320 at 321]

There always exists a fear that such an approach might lead to findings that simple solutions were all obvious and this fear turned into a reality and was alleviated by the decision in Packing Machine/Michaelson[footnoteRef:41], a case involving the use of a well known element (already in public domain) for some new purpose. The Board after considering various facts and issues stated: [41: T 106/84, Packing Machine/Michaelson [1985] EPOJ, p. 132.]

The yardstick for measuring the inventive step applied to such uses must go beyond the mere appreciation of such different use. Therefore, the Board invited the appellant to put forward evidence why a specialist having knowledge of electrical heating equipment, who is the person skilled in the art to be called upon to solve the problem at hand, would not think of replacing the conventional elements by (the claimed) elements in order to avoid the recognized shortcomings, even though he was aware of certain desirable characteristics of the claimed evidence and that no insurmountable difficulties would attend their use.In these circumstances, the Board came to the necessary conclusion that such and invention was pretty obvious and it was necessary to consider whether there are any valid secondary considerations tending to displace this prima facie assessment. As secondary considerations, the applicant advanced the following:(1) there must be multiple attempts over a period of years to the same problem.[footnoteRef:42] [42: T 271/84, Air Products/Removal of H2S and COS [1987] EPOR 23.]

(2) there was departure from the general tendencies and the known elements were being used to approach the problem from a different direction.(3) the market should be ready to accept the new product on the grounds that it was taken by surprise and an important advantage has been received in using the claimed invention.[footnoteRef:43] [43: T 38/84 , Oxidation of Toluenel Stamicarbon [1984] EPOJ 368]

The Board also concluded that the appellant had been successful in achieving simplicity without the great sacrifice to quality rather lesser inventive accomplishment rather than lesser inventive accomplishment. In fact, experiences are witness to this fact it is by far much difficult to develop a solution which is simple than a complicated one. This is even more so when a superior result ought to be obtained.[footnoteRef:44] Now the problem which needs to be paid heed to is that when an application for revocation of such patent is made and when analysis is made the issue with hindsight arises and it turns out that such solution was simple enough and that anyone could have easily thought of it. Indeed, this becomes the foundation of many decisions destroying applications or patents for lack of inventive step. [44: John Richards, 10 Years of Substantive Law Development in European Patent Office, 71 J. Pat. & Trademark Off. Soc'y 1989 320 at 325]

In other decisions, the Boards have also cautioned against putting too much weight on commercial success unless this can unequivocally be tied to some technical effect rather than extraneous factors.[footnoteRef:45] The need for there to be "something extra" to establish patentability in cases where one is taking a known element and using it to perform its known purpose in a new situation was emphasized by the Chemical Appeal Board in Deodorant Products/Unilever[footnoteRef:46] where it was pointed out that in the absence of prejudice or a surprising result it was obvious to take a compound known for a particular purpose in one type of composition and use it for the same purpose in a different composition. [45: T 191/82, Baled Waste Paper Product/Fibre Chem [1986] 2 EPOR 88.] [46: T 119/82, Deodorant Products/Unilever [1984] EPOJ p. 217]

Further, in the case of Containers/Imperial Chemical Industries[footnoteRef:47], the Examining Division had rejected the application on the ground that the problem to be solved by the inventor had not been set out in the application, this was so because of the Implementing Regulations of the EPC which requires that the disclosure in the specification should be in such terms that the technical problem and its solution can be understood. The Board, however, reached the conclusion that if the subject-matter of an independent claim, for which there is sufficient disclosure, is judged as being inventive in character, it must always be possible to derive a technical problem from the application, thus, in effect holding that there was no separate requirement for a disclosure of a problem and solution as long as it could be deduced that these exist.[footnoteRef:48] [47: T 26/81, Containers/Imperial Chemical Industries [1982] EPOJ, p. 211] [48: John Richards, 10 Years of Substantive Law Development in European Patent Office, 71 J. Pat. & Trademark Off. Soc'y 1989 320 at 339]

ConclusionThe researchers through their research in their project have also realized certain inherent defects with such approach followed in the European Patent Office, and their answers have not yet been resolved:a) What happens to such inventions which do not have closest prior art and fail to prove the step one of problem solution approach?b) What is the fate of products which involve partial solution to a problem persistent over the years?c) How products which involve simple answers to persistent problem but later turn out to be obvious?In the case of Actavis UK Ltd v Novartis AG[footnoteRef:49] Jacob LJ's stated that the greatest misgivings about the "problem and solution" approach lay in the EPO Guidelines for Examination's reference to the "reformulation" of a technical problem based on objectively established facts. The tribunal will have to artificially create a problem that was supposed to be solved by the invention. In Jacob LJ's view, "re-formulation" really means "retrospective construction"[footnoteRef:50].The learned judge also made reference to the 51/4 inch plate paradox, which was explained as follows. Suppose the patent claim is for a plate of diameter 51/4 inches and no one can find a plate of that particular diameter in the prior art. Therefore, it is novel and non-obvious for there is no particular reason to choose that diameter. The conclusion is that the plate is patentable, and the fact that the "problem and solution" approach has no answer to this makes the result of paradox absurd.[footnoteRef:51] [49: Actavis UK Ltd v Novartis AG [2010] EWCA Civ 82] [50: Ibid, at [32-34]] [51: Ibid, at [36]]

The above mentioned limitations have risen questions as to how effective is the present approach followed by EPO, which has led us to form a more authentic approach that could answer the majority of the above raised questions. One such attempt has been made by Lord Hoffman In the case of Biogen hinted that the definition of "inventive concept" is an indispensable step in the evaluation of inventive step, suggesting that at the second stage of the Windsurfing formulation[footnoteRef:52] it would be helpful to infuse, where applicable, a "problem and solution" analysis into the identification of the inventive concept. As it would satisfy two purposes-: [52: The test has been explained above.]

a) that the Windsurfing formulation may be elevated to more than "just a guide"b) that the said formulation is not closed to the application of EPO-based methodology, examining guidelines and other literature, recognising the increasing receptivity of European patent law standards and examining practices in various jurisdictions.

And at the same time it should be recognized that not all inventions are based on "problem and solution". Not all inventions are to be classified as successful solutions to a problem that had hitherto identified a long-felt want. To the contrary, inventions may not only be the result of long experiments and profound research but also of chance, sudden lucky thought or mere accidental discovery. Inventions that are an advance of contemporary expectations and reveal an unfelt want may also involve an inventive step. For these categories of inventions, experiments and research may throw no light on the quality of what was claimed to be an inventive step[footnoteRef:53]. It has been hinted by the court that if a more infused approach is followed then could result in filling the gaps of both the Windsurfing test and problem-solution approach., therefore it is suggested that a more appropriate approach by infusing both the popular test should be formulated, such an approach could include the following aspects as mentioned below-: [53: Stanley, The Future Of Inventive Step In Patent Law, (2012) 24 Sac LJ]

(1) Identifying various factors involved in judging the invention:(a) Identify the notional "person who is skilled in the art";(b) identify the relevant "common general knowledge" of that person;(c) identify the relevant field-specific knowledge of that person; and(d) identify documents and other materials that the person skilled in the art would have identified as a starting point to tackle a new problem.

(2) Identify the inventive concept of the claim in question, or if that cannot readily be done, construe it by reference to:(a) a problem-and-solution approach; and(b) if the inventive concept is not problem-based (so as not to encapsulate a solution), consider whether the invention is the result of sudden thought, chance or accidental discovery.

(3) Identify what, if any, differences exist between the matter cited as forming part of the "state of the art" and the inventive concept of the claim as construed.

(4) Do these differences constitute steps that would have been obvious to the person skilled in the art or do they require any degree of invention by reference to the following factors?:(a) The characteristics of the problem that the claim addresses (including but not limited to how long it has existed and how significant it was known to be);(b) What prior art would have been known or considered in finding a solution to the problem that the claim addresses, and what other solutions exist in the prior art?; (c) Was the solution contained in the claim one that was obvious to a skill addressee to try with a fair expectation of success? and,(d) How well has the patentee's invention been received (commercial success that is the outcome of inventiveness)?The above mentioned four-step approach[footnoteRef:54] have been developed from both the tests and if adopted by EPO can result in filling the gap in the problem solution approach. The researchers believe that even though the Problem-Solution approach is concluded to be one of the most efficient test for judging inventiveness, there can be certain inherent defects which may be overruled by adopting this approach. [54: Ibid.]

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