INVENTIVE STEP IN EUROPE

“raising the bar”

Koen BijvankEuropean and Dutch patent attorney

Raising the bar: which one?

Is the inventive step criterion in Europe harmonized?

The landscape- The EPO approach during examination and

opposition proceedings- The approach of the national courts after

grantThe trendsHow would raising the bar in the EPO affect national court proceedings?

Inventive step in Europe

Article 56 EPC:

An invention shall be considered as involving an inventive step if, havingregard to the state of the art, it is notobvious to a person skilled in the art.

The criterion is clear, its application far from it.

The European Patent Office

The problem-solution approach

1. determining the “closest prior art”2. establishing the “objective technical

problem”to be solved3. considering whether or not the claimed

invention, starting from the closest prior art and the technical problem, wouldhave been obvious to the skilled personGuidelines for Examination in the European Patent Office C-IV, 11.7

The closest prior art

Most promising starting pointShould be directed to a similar purpose oreffect as the inventionShould be from the same technical field as the inventionRequires the minimum of structural and functional modifications to arrive at the invention

The objective technical problem

Determine the distinguishing features of the invention over the closest prior artIdentify the aim and task of modifying oradapting the closest prior art to provide the technical effects that the invention provides over the closest prior art

Has the problem been solved across the entire scope?

Is it obvious?

Combining prior art documents‘Could’ versus ‘would’Obvious to try: reasonable expectation of succesWho is the skilled person?No (or hardly) room for ‘squeeze arguments’

United Kingdom: the litigation system

Infringement and validity in the same proceedingsA specialized courtDiscoveryCross-examination

Inventive step in the United Kingdom

Formal approach different from the problem-solution approachFocus on common general knowledgeExperts are crucial‘Squeeze arguments’ often used

Inventive step in the United KingdomWindsurfing v Tabur Marine (1985)

modified in Pozzoli v BDMO & Anor (2007)

1. Identify (a) the notional “person skilled in the art”and (b) his common general knowledge

2. Identify the inventive concept, or construe it 3. Identify the differences between the “state of the

art” and the inventive concept 4. Viewed without any knowledge of the invention,

do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?

Germany: the litigation system

Separate proceedings for validity and infringementA specialized court dealing with validityFocus on written submissionsNo discovery or cross-examination

Inventive step in Germany

No formal approachThe formulation of the problem is based on- the specification- prior art mentioned in the specification- common general knowledge

Invention sometimes compared to combination of documentsNo (or hardly) room for ‘squeeze arguments’Experts play a relatively minor role

The Netherlands: the litigation system

Infringement and validity in the same proceedingsA specialized courtFocus on written submissionsNo discovery or cross-examination

Inventive step in The Netherlands

Usually the problem-solution approach is appliedArguments often focus on:

- Selection of the closest prior art- Motivation to combine- Reasonable expectation of success- Unexpected results

Room for ‘squeeze arguments’Experts can be decisive

The trends

Are the national courts lowering the bar?

Conor Medsystems vs AngiotechEli Lilly: olanzapineLundbeck: escitalopramLeo Pharma: calcipotriol

Possible effects of raising the bar at the EPO on national proceedings

Will national case law follow the EPO?Less patents, less litigation?Stronger patents, more determinations of infringement?Stronger patents, more confident patentees, more litigation?

Thank you!