Tuesday 21 February 2012

The Applicant is Kindly Requested to Dig His Own Grave

The "Guidelines for Examination at the European Patent Office" are just what the name says. They should guide the EPO Officers through the Examination procedure and are not addressed to the applicant.

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 to
- 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.
 When 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.

Wednesday 1 February 2012

Technical Contribution, not Economical Contribution Counts for Inventor's Remuneration

The German Federal Supreme Court (BGH) has published its decision (Ramipril II - X ZR 35/09) in a dispute on Inventor's remuneration.

In the case at issue, neither the original invention report nor claim 1 as filed or as granted relating to a substance made mention of a particular ingredient with the name Ramipril. Nontheless, the feature that the substance contains Ramipril has somehow made its way to a dependent claim 8. However, this dependent claim 8 turned out to cover the economically most important embodiment of the invention.

Both the employer and the Upper District Court considered the fact that the element which turned out to have the highest economical importance as being relevant for the calculation of inventor's remuneration.

Actually, the guidelines for calculating the inventor's remuneration as well as the established case-law require calculating the value of the invention as well as the "share factor" (Anteilsfaktor) the inventor has contributed as compared to the contribution of the employer and of his co-inventors.

The BGH has now found that this "share factor" is to be calculated based on the technical contribution the employee-inventor has made in view of the prior art. The economical importance of this contribution as compared to other contributions of the invention is of secondaryrelevant only to the extend where  the economical success is considerded as an indicator for the role of the feature in the development process of the claimed subject-matter. However, according to the judgement of the BGH, the generally no causal link between the economical exploitation of the invention and individial features of a claim because using the the patented invention necessarily means at least all of the features of the independent claim are used in combination.
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