Art. 56 EPC comprises a legal presumption of inventiveness in its formulation:
"An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art."Inventiveness is something which has to be disproven and can not be positively proven. Else, the Article would read "An invention shall not be considered as involving an inventive step unless, having regard to the state of the art, it is not obvious to a person skilled in the art. Trying to find a consistent chain of obvious steps to be taken by the skilled person disproving inventiveness is the job if the Examiner. In an attemt to avoid hindsight analysis, the EPO prescribes the problem-and-solution approach for this purpose.
These are the rules of the game: the examiner has to try establishing a logical chain of reasoning using the problem-and-solution approach and the appicant's task in the examination of obviousness is to point to the steps which are illogical or non-obvious in this approach.
It appears that some examiners have gotten this completely wrong. Many (according to my subjectiv impression mainly those from The Hague) use the following text block in their examination reports:
The applicant should indicate the difference of the subject -matter of the new claim vis- a- vis the state of the art and the significance thereof, i.e., which is the underlying technical problern that is solved in an inventive way by those features of the independent claim that form a contribution over the prior art (e.g. D1 ). ln the Ietter of reply, the applicant is requested to apply the problem-solution approach for inventive step as outlined in the Guidelines CIV 11.5, i.e. the applicant is requested toWhen I read this text block, I always feel that the examiner on the other side has not really understood what the Examination procedure is all about. He actually wants the applicant to execute the tasks of the examining division.
- determine the closest prior art,
- identify the technical features distinguishing the claimed subject-matter from the closest prior art,
- identify the objective technical problern being solved by the claim, and
- provide a convincing argument as to why the solution to the above objective technical problern that is put torward by the claim would not have been obvious to the skilled person.