Oddfellow August 2018

J.A. McStea, Teemacs GmbH

Bubendorf 17 August 2018

The myth of global warming…

Ha, ha, I thought, as I sat sweltering in stifling heat – in Belfast. I was there for just over 3 weeks and I didn’t once don a raincoat. And the temperature nearly cracked Northern Ireland’s all-time record (30.8° (C!!)). Indeed, the whole of the UK did a lot of sweltering; all sorts of advice was given as to what children and elderly people ought to be doing (or not doing), as the case may be. As a non-sun-lover (I have the classic Celtic skin, the one that gets sunburn at candlelit dinners), I think it most unfair that Oz weather should have followed me here. Still, the countryside is much nicer to look at (from the air-conditioned comfort of the car) than in normal Northern Irish weather conditions. And for the ultimate in air-conditioning, you can always drive up to the Giant’s Causeway in North Antrim, and have your head blown off. And, if you’re so inclined, you can then retire just down the road to Bushmills, where the world’s oldest licensed distillery allows you to get stoned in two different ways on the same day.

My reason for going was to keep an eye on my mother (94 and with the beginnings of Alzheimer’s) while my brother was on holiday. I suspect the onset of dementia in a relative is something with which many of you have already been faced. My mother isn’t too bad – she still recognizes people and her treatment in the home in which she now lives has brought marked improvements. She no longer sees people who aren’t actually there. The improvement is a two-edged sword – it means that she more clearly realizes her situation (no longer being in her own home) and this makes her profoundly unhappy. Unable (or unwilling) to see that she could no longer live on her own, she accuses my brother and myself of “sticking me in here” for our convenience, and my brother for taking all her money. On some days, I was not actually God but at least His right-hand man, on other days I was the devil incarnate. Interesting times ahead.

The EPI (European Patent Institute), to which we as European Patent Attorneys all compulsorily belong, has instituted a number of so-called “roadshows”, in which speakers from both the EPI and the EPO move around various European cities, giving talks on developments in the European system. I went to one in Bern a few months back, and was suitably impressed to go to a case law one in Basel, just down the road. This again was very good. The participants held a mock appeal oral proceedings, which was interesting, because the “Board members” (who really were Board members) explained the rationale behind the procedures and why certain things were done in a certain way. For me, one of the most striking points was made by one of the lecturing Board members – he said he disliked the term “case law”, preferring “jurisprudence”? Why? Because, unlike the binding nature of decided cases in UK/Australian courts, EPO decided cases are not like that – they settle matters for the particular case being litigated, nothing else. They are advisory for the other Boards of Appeal, but are not binding on them – this is even true for the Enlarged Board decisions. These decide on points of law either because two different streams of cases are going in different and contradictory directions, or because the President has referred the point of law to the Enlarged Board. I know we all felt vaguely that this was the case, but it was interesting for me to hear it spelled out so clearly.

Meanwhile a further spoke has been stuck in the wheel of the Unified Patent Court juggernaut. This has been supplied by the Hungarian Constitutional Court, which has ruled that the UPC Agreement constitutes a violation of the Fundamental Law of Hungary, because it hands over jurisdiction over direct actions of individuals to an international institution – meaning that decisions made this way will be completely excluded from constitutional review and Hungarian state jurisdiction. The Hungarian Government cannot therefore ratify it. Hungary is small beer in comparison with Germany, which is one of the mandatory ratifiers, but could the same issue arise in respect of other ratifiers or would-be ratifiers, taking the number below the required minimum of 13?

CIPA is at it again; the latest EQE statistics are out and CIPA is crowing. “The high quality of training in the UK has been highlighted by the latest EQE results, where attorneys in the UK have continued to outperform their counterparts in France and Germany”. Oh, dear, just because the chaps and chapesses do better in the artificial confines of an exam room they are better attorneys? Come on! The good attorney is the one who delivers the goods on the job for the client – it’s what happens after the exam that matters. I’ve known some folk who were excellent at the job but who had enormous difficulty with the exams. On the other hand, I knew some EPAs (including, shock, horror, chaps) who couldn’t draft to save their lives. Part of the problem is that the EQE is really a very British exam, quite different from, for example, the German Patentanwalt exams, which are entirely legal (no drafting or office action answering).

So, what were the figures? Let’s take Papers C (Opposition) and D (Legal), the two generally with the highest failure rates. For the UK, Germany and France, the pass rates were, respectively, 70.97%, 40.2% and 39.64% for C and 62.36%, 25.33% and 34.78% for D. Mind you, these are not as impressive as the 100% in both cases for Lithuania, but then I guess we can assume that both of Lithuania’s candidates worked very hard. However, the figures for the chap(esse)s are unusually good, much better than usual, where the difference is only a few percentage points, so this clearly was an good UK year for some reason.

These figures come at an opportune time for CIPA, as the UK teeters on the edge of Brexit (less than a year away, remember) and people abroad are amazed at the staggering incompetence of the UK Government. Remember, the UK Government is mainly composed of the ultimate of chap(esse)s, Eton/Harrow/etc. and Oxbridge chap(esse)s. Watching the shenanigans makes folk abroad wonder whether attendance at these hallowed institutions actually does anyone any good – or is it simply a case of you-know-what floating to the surface?  I can’t help wondering whether this new spate of drum-banging is a reflection of the need to reinforce the fact that there is actually some part of the UK in which one can have confidence (and, all joking aside, the UK profession is generally very good). In addition, there’s that nagging worry that the UK may not be part of the Unified Patent Court system, so the world needs to be reminded about what it may be missing out on. The UK says it wants to be a part of the system, even after Brexit – nobody is sure as to whether this is actually possible. It may necessitate a major rewrite, and even renegotiation, which may allow Certain Other Countries another opportunity to toss a spaniard into the works.

What seems to be a certainty is that the UK’s best chance of staying in the system is for the UPC to be up and running before Brexit, so that the UK can take part as an EU member. Which takes us back to Germany and Hungary…

I see that you may soon have the joy of the problem-solution approach. O joy, O rapture… This wondrous creation of the EPO, which is now virtually Holy Writ in the EPO is not actually specifically mentioned in the EPC, but was derived from a Rule (not even an article) – moreover, a rule that has nothing to do with inventiveness, but with the content of the description. I guess they needed something, because the EPC gives them nothing.  Article 56 says that a patentable invention must have an inventive step, meaning that “it is not obvious to a person skilled in the art”. Meaning what? The EPC doesn’t elaborate. So the EPO turned to Rule 42 (Rule 27 as it was then):

The description shall: 

disclose the invention, as claimed, in such terms that the technical problem, even if not expressly stated as such, and its solution can be understood, and state any advantageous effects of the invention with reference to the background art;  

The problem-solution approach apparently originated with an EPO Examiner and later BoA Chairman, George Szabó. It was George’s attempt to force uniformity upon the various different Contracting State standards of inventive step. George actually did write an article about it, which I used to have but can no longer find (The Problem and Solution Approach in the European Patent Office, 4 I.I.C. 457, 458 (1995)). Very early in the EPO’s existence (the German language decisions T1/80 and T24/81), comes the view that the identification of the nearest prior art must be based on objective criteria, such that the nature of the technical problem to be solved can be identified. The first decision to use the hallowed words “problem and solution method” and insist on its use appears to be T248/85. Interestingly, T 465/92 says that the “Aufgabe-Lösungs-Analyse” is not the be-all and end-all when it comes to inventive step considerations.

On the question of inventive step, the board did not apply the so-called “problem-solution approach” in this case. A number of decisions … state that the application of this analysis is an indispensable condition for the EPO’s determination of inventive step. Although the Board deviates from an earlier interpretation of the Convention to the extent that it does not accept its full scope, this is justified in accordance with Article 15(1) of the Rules of Procedure of the Boards of Appeal.

Notwithstanding this, deviation from it is now surpassingly rare. The initial part of the business is finding the closest prior art, which is, according to the Guidelines:

.. that which in one single reference discloses the combination of features which constitutes the most promising starting point for a development leading to the invention. In selecting the closest prior art, the first consideration is that it should be directed to a similar purpose or effect as the invention or at least belong to the same or a closely related technical field as the claimed invention. In practice, the closest prior art is generally that which corresponds to a similar use and requires the minimum of structural and functional modifications to arrive at the claimed invention.

Sometimes this doesn’t make a whole lot of sense. In a recent appeal in which I was involved, the patent against which we were appealing related to the suppression of unpleasant tastes. There was a document that had, as its subject, the enhancement of sweet taste. Yet, right in the middle of it, were unpleasant taste suppressors that were only one methylene group different from the ones in the opposed patent. If this isn’t “obvious to try”, I don’t know what is. But the Board refused to consider that this could be the closest prior art, because it didn’t have the same object. Chemists working in the field and Board members clearly read documents differently.

Still, it could be worse – in the USA I was recently confronted with this, as I’m sure you also have been:

Claims 10-15 are rejected…as being unpatentable over Dave Dee in view of the combination of Dozy, Beaky, Mick and Titch.

This borders on the totally surreal – you mean that the proverbial skilled person is really going to dig through all these references to produce an alleged inventive step-destroying argument? If it involves that much effort, it must surely be inventive!  But then, Alexandria VA appears to be populated by inventive geniuses who are particularly adept at seeing through the feeble efforts of lesser mortals. In a country presided over by a very stable genius, should we be surprised?

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