A board of appeal of the EPO held that for the problem-solution approach to inventive step the requirement of the same “purpose or effect” in the criteria for selecting the closest prior art for a claim refers to the purpose or effect of the claimed subject-matter as a whole, not just of its distinguishing feature(s). Teaching away does not exclude use of a publication as closest prior art. Nor is a teaching towards the distinguishing feature(s) necessary to qualify as the closest prior art. The problem has to be determined after selection of the closest prior art.

Case date: 20 January 2021
Case number: ECLI:EP:BA:2021:T114815.20210120
Court: European Patent Office (EPO), Board of Appeal

A full summary of this case has been published on Kluwer IP Law.


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13 comments

  1. I never understood this discussion and only played along with the closest prior art theme to pass the EQE. In my mind, any document is a valid starting point if it results in obtaining the subject matter in question via the problem solution approach. That is, if there is any conceivable way to arrive at the alleged invention without inventive step, then it is dead. Just because a road looks less traveled when you are at a crossing does not mean that road won’t ever be taken.

    Sure, in practice you try to start with the document you consider closest because you don’t want to do 15 problem solution approaches that don’t work out before you find one that does, but that is just for convenience and not a part of the underlying theoretical framework.

    1. @peter parker
      The problem-solution approach is intended to be a safeguard against hindsight-guided assessment of inventive step. Guideline G-VII, 8 rightly points out that the documents obtained in the search of the prior art have been obtained with foreknowledge of the claimed invention – this is inevitable – and the examiner must always bear this in mind when combining documents to avoid ex post facto analysis. If you come up with a reasoning which arrives at the invention by a series of apparently easy steps, it must be kept in mind that every document relied upon in the reasoning has been obtained with foreknowledge of the invention.
      This is why it makes sense to relate the problem-solution approach to the framework defined by the « aim or purpose », I would rather refer to a « field of use » or « field of application ». This framework is relevant for every step of the problem-solution approach and provides maximum objectivity. The purpose or field of use is the defining context for the « problem » (which includes a particular objective or set of objectives but also the host of constraints applicable to that field), it defines the « art » of the skilled person, which allows the delineation of the common general knowledge of the skilled person, and it is the key factor to select a « closest prior art ».

    2. @peter parker
      The problem-solution approach is intended to be a safeguard against hindsight-guided assessment of inventive step. Guideline G-VII, 8 rightly points out that the documents obtained in the search of the prior art have been obtained with foreknowledge of the claimed invention – this is inevitable – and the examiner must always bear this in mind when combining documents to avoid ex post facto analysis. If you come up with a reasoning which arrives at the invention by a series of apparently easy steps, it must be kept in mind that every document relied upon in the reasoning has been obtained with foreknowledge of the invention.
      This is why it makes sense to relate the problem-solution approach to the framework defined by the « aim or purpose », I would rather refer to a « field of use » or « field of application ». This framework is relevant for every step of the problem-solution approach and objective. The purpose or field of use is the defining context for the « problem » (which includes a particular objective or set of objectives but also the host of frequently implicit constraints applicable to that field), it defines the « art » of the skilled person, which allows the delineation of the common general knowledge of the skilled person, and it is the key factor to select a « closest prior art ».

  2. Peter, I agree. Well said!

    Personally, I abhor decisions that use the expression “closest prior art”. To use this expression is misleading within Europe and, outside Europe brings undeserved ridicule down on the head of the estimable EPO problem-solution approach to the obviousness enquiry which I so much admire.

    Why do people do it? Is it a lazy hang-over from how obviousness is discussed in the patents courts of Germany?

    1. “Is it a lazy hang-over from how obviousness is discussed in the patents courts of Germany?”

      I don’t think so.
      In every decision I know (at the DPMA, the BPatG or the BGH) all relevant prior art is discussed, when patentability is confirmed. There are several decisions by the BGH, that a reason must be given for any document, why it is to be used during discussion of inventive step. Further, the BGH states that it doesn’t matter if there is “closer” prior art, as claim-matter has to be not-obvious compared to all prior art documents or their combination. Sometimes it is a bit tiresome, when they recite for a lot of documents, why the claim is valid…
      Of course, for negative decisions, usually only the “killer”- prior art is discussed…

      1. Appreciated. Thank you, Fragender. As you say, when none of the prior art is effective against the claim, the decision should explain why whereas, when one starting point knocks out the claim, there is no need (unless the decision is going to get appealed) to discuss the others.

        Nevertheless, I think it unfortunate, to continue to dub that one reference the “closest” reference. There is no need to adopt this terminology. To do so only irritates readers outside Europe.

        Am I missing your point? If so, do say.

        1. MaxDrei, we are in full agreement here.

          Luckily, as a DPMA-examiner, I don’t have to deal with selecting the CPA, as we don’t have this concept. So, any document I consider I simply call prior art, but never the “closest” prior art. Either there is a way from a document or several documents to the claim-matter or there is not. In my areas of examination, if there is one way, there are usually more that are equally valid.

          In contrast, patent attorneys regularly call some document the CPA. Mostly this appears to be ingrained to them during the training for the EQE and their proceedings before the EPO, so they carry it over to the German proceedings (just as they regularly address the “examination division”, which we do not have…). In the rare cases, when they argue about what should be considered as the CPA, I take it actually as a hint that possibly another document is the better starting point.

  3. It should not be forgotten that the problem-solution-approach is a tool and not a holly cow.
    It is a creation of case law first in chemistry and it diffused later into other technical domains.

    The present decision is not the first one to consider that another document which might prima facie look further away can also be considered as closest prior art. I refer for instance to T 2057/12 which is quoted in the observations under R 106.

    Any document which by reasonable consideration can in combination with other documents show that there is a lack of inventive step can be used. The term “closest prior art” means no more than that this is the starting point of an an attack on inventive step.

    A number of criteria have been developed in order to chose the “closest prior art” and to prevent unrealistic starting points. The requirement of the same “purpose or effect” is again just a tool which helps in the selection, nothing more.

    Use of common sense could help avoiding long discussion as to which document is actually to be considered the “closest prior art”.

  4. Thank you, Attentive. You write that “common sense” is effective to cut short a “long discussion”. I agree. Unfortunately though, common sense is not at all common. I wish there were more of it, but there isn’t. Until there is (and when will that be?) unecessarily long “discussion” will continue to burden us all.

    You explain that the term “closest prior art” :

    “….means no more than that this is the starting point of an an attack on inventive step.” under the EPO’s unique “Problem-Solution Approach” to the enquiry into obviousness. Sure, that’s what it means to you, to me and to everybody who has passed the EPO qualifying examination. But not to anybody else.

    In my experience, an awful lot of clients, Applicants, and patent attorneys who have not trained for the EPO qualifying examination have a different idea what is meant by the term “cloesest prior art”. The long discussions occur because they are between people using the term “closest prior art” to mean different things. Unfortunately, both sides think there can be no other meaning than the one in their own head, so neither comes to the idea to explain to the other side how they understand the term “closest prior art”. Imagine a discussion between an Englishman and an American about the Rules of “Football”. The discussion will be a long one, if they don’t first agree on the differences between American football and the game we call football.

    So let’s cut short the discussion by refraining from using the term “closest” and favour instead the notion of the prior art source that qualifies as a “reasonable starting point” for the unique and very special EPO-PSA approach.

  5. Dear Max Drei,
    I can agree with you!
    But it is tragic to see that educated people to have such sterile discussions.
    It is a waste of time, but I fear that each denomination chosen will be criticised.
    If you are opponent any document can qualify as starting point.
    If you are proprietor any document which is far away should be chosen.
    I support your definition but the mere word reasonable is open to interpretation.
    I would therefore use “starting point” being well aware that “starting“ can also be misunderstood with people minded to misunderstand any word which does not help their cause.

    1. As you point out, Attentive, lawyers have a tendency, wilfully to misunderstand, whenever it suits their case. But every obviousness argument needs to start from somewhere, so it is hard to say that “I don’t understand the notion of a starting point in the state of the art”. Everybody needs one, everybody has to have one.

      As these T Decisions show us, however, the debate as to what constitutes a viable starting point reference is at the core of the EPO-PSA approach.

      Americans are familiar with what they call their “TSM” approach (Teaching/Suggestion/Motivation). It has come into disrepute because it is not prescriptive. Rather, it is so vague that it is not useful for holding the obviousness debate focussed. The debate degenerates into mere hand-waving. When Americans realise that PSA is a species of TSM they are inclined to dismiss it as unable to reliably deliver the “right” result to the obviousness debate.

      Hence, it is really important, that those in Europe who understand PSA carefully explain to all those familiar with USA-TSM that EPO-PSA has far greater potential than TSM, forensically to arrive at the right result.

      As to the determination of the most promising starting point, it begins with the person drafting the patent application. The work product of that person will determine (for their client) the technical field, the inventor’s subjective problem addressed, the technical effects achieved and hence fix what is going to be (after the EPO search) the all-important OTP of EPO-PSA. Americans (and those who are trained by Americans) still don’t really appreciate how the drafter sets the terms of the PSA debate. In my opinion, it will be better for us all when they do.

  6. @Max Drei
    I see a major difference between the US and the EPO, in the US MPEP there is no warning against hindsight-guided assessment contrary to the EPO Guidelines and US examiners have extensive discretion for citing references even quite remote from the field of the invention and relying on piecemeal combinations for supporting obviousness rejections.
    I agree with you that the drafting of the application is the key factor. Among the parameters to be defined, it is my view that the definition of the “purpose”or “field of use” is particularly important for the PSA, as I stressed in my first comment . This is to be distinguished from the “technical field” which may be extremely broad, such as a class of components, but the problems and the skilled person are quite different depending on the field of application.

  7. Francis, thanks for that last comment. I had never appreciated that there might be an important difference between the “technical field” and the “field of use”. I must henceforth keep in mind that valuable insight.

    As to “hindsight” I agree with you about the USA. Which to my mind makes it extremely ironic, that many Americans are scatheing in their criticism of EPO-PSA because, they say, it suffers appallingly from the application of hindsight.

    But gradually they will adjust to their new First to File environment, to describe inventions in a specification written BEFORE the decisive legal date (as opposed to long AFTER the “date of conception” of the invention in their “First to Invent” landscape.

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