Tuesday, March 10, 2009

Obviousness: European problem and solution approach

MaxDrei, a commenter on Patently-O, asked if there were law review articles criticizing the European "problem & solution" approach [PSA] to the obviousness inquiry. [Specifically: Can anybody point me to a scholarly (we are on law professors, after all) demolition job done on EPO-PSA?]

As background, a prior post by MaxDrei on Fire of Genius:

What strikes me is the copious mention in them [cases on long felt need], of problems solved by the claimed subject matter, and technical effects at last achieved. It reminds me of the approach developed by the EPO, which we can call PSA, in which we conduct the analysis of obviousness by toggling between claimed features and delivered effects. But I also think of that principle of patent law which allows validity attacks on the basis of a document (D1) deemed to be known by the PHOSITA, but not part of the real life general knowledge of the individual American engineers or scientists to whom your collected Decisions refer, and from whom the evidence of long felt want was laboriously and painstakingly collected. Maybe D1 is a Japanese or German publication, for example. While PSA addresses the artificial (but surely non-subjective) “objective” problem, your Decisions look at the problem, exposed by the (ex post facto created) Affidavit evidence, that real industry people were addressing in USA many years earlier, back at the relevant date. For me, the evidence of contemporaneous docs is more probative than that of Affidavits created by the litigants during the litigation.

Then I think of the countless thousands of attorney hours that went into these cases in your collection. How many of them were spent preparing Affidavit evidence concerning a problem other than the “objective” problem? For legal certainty, we want to know what the PHOSITA would have thought, when confronted with the “objective” problem, on the relevant date.

Which is what PSA does, of course. PSA demands that the PHOSITA be considered to be on a “starting point” in the published art, which would have been the most “realistic” for addressing the issue which the inventor announced in his app, that he wrote before the claim was filed at the PTO. Which is why PSA settles obviousness in about an hour towards the end of the working session, at EPO Hearings in which much more time is spent, before one gets to obviousness, arguing about equally crucial matters of clarity and novelty.

If there was a flaw in PSA, such that it is not neutral between the opposed parties, it would have been seen off long ago. But it’s still there, unassailable, because it is neutral.

Then I think about the HUGE cost of translations, for those who own patents in Europe, and the cacophany of complaint about the tendency of countries in Europe to insist on their own language. But I’m fairly sure that PSA has saved these owners, over the years, vastly more lawyer fees than all the money they’ve paid out since 1978 in translator fees.

MaxDrei gave a working example on 28 March 08:

So, Joe, how about K Moore and Euro TSM (aka PSA). Thus:

Starting point: Gopher Zapper

Objective problem: susceptibility to dirt and damp

Claimed solution: resistive switch.

TSM in prior art? DONT KNOW. What do Dye and Madsen say about the resistive switch, as a way to reduce susceptibility to dirt and damp?

If Dye or Madsen contains a hint to use resistive to lower the susceptibility, claim obvious. Otherwise, maybe Euro PSA indicates: not obvious.

But, should be dirt simple to decide: Y/N.

Comment by MaxDrei — March 29, 2008 @ 11:19 am

Sorry Joe, and readers. I didn’t read the Moore decision carefully enough. Page 11, last line reveals that both Dye and Madsen were teaching that one way to reduce susceptibility to dirt and damp is….a resistive switch. I think that just about wraps it up, and I think even the average juryman (or District Court Judge)could follow PSA logic, once it is explained.

MaxDrei on PatentHawk:

Regret, but don't understand your thinking Hawk. Both legal novelty and legal obviousness are artificial, because no real person knows the art like the PHOSITA does. Legal certainty on what's patentable requires an "objective" test for obviousness, to match the one we already have for novelty. As we are now seeing in the SCOTUS/CAFC obviousness caselaw in the ME/EE arts, everything's predictable so, with hindsight, everything's "obvious". Except that that's not fair to the inventor, is it? The EPO does have an objective, hindsight-free test for obviousness, called PSA, which it's been refining these past 30 years. EPO folks watch the rest of the world keenly, to see when it will come up with its own dispassionate objective obviousness test. We're still waiting.


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