A graphical representation of the problem-solution approach (PSA) - a powerful tool facilitating the assessment of inventive step of patents

Transcription

1 graphical representation of the problem-solution approach (PS) - a powerful tool facilitating the assessment of inventive step of patents Dr. Joachim Stellmach European Patent Office Directorate dvisor Industrial Chemistry II-SDV Nice 15./16. pril 2013

2 Who am I? Joachim Stellmach (DE), directorate advisor, EPO Munich - Studied Organic Chemistry in Münster/Westf. and Freiburg/Brsg. - German Patent Office 12/1982-3/ t the EPO since 4/1986 (Munich) - BEST tutor from 9/1990-1/1994 (The Hague) - BEST examiner since 2/1994 (Munich)

3 Total European patent filings 1 +5,2% Direct European filings under the EPC and International filings under the PCT

4 genda Structure Some general Remarks on patentability; the difference between novelty and inventive step The different steps of the problem and solution approach - the text graphical representation as visual supplement using the PS during search and examination SR/SRR and PS as expert assessment of inventive step Examples from the Technical Boards of ppeal of the EPO Generalisation and further concrete Examples ( quantitative effects, evidence of inventive step, deviation, use claims )

5 Guidelines 2012 G-VI, 2 Implicit features or well-known equivalents Guidelines 2012 G-VI, 2 Implicit features or well-known equivalents document takes away the novelty of any claimed subject-matter derivable directly and unambiguously from that document including any features implicit to a person skilled in the art in what is expressly mentioned in the document, e.g. a disclosure of the use of rubber in circumstances where clearly its elastic properties are used even if this is not explicitly stated takes away the novelty of the use of an elastic material. The limitation to subject-matter "derivable directly and unambiguously" from the document is important. Thus, when considering novelty, it is not correct to interpret the teaching of a document as embracing well-known equivalents which are not disclosed in the documents; this is a matter of obviousness.

6 EPC, PCT Guidelines 2012 G-VII, 1 General n invention is 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 rt. Novelty (see G-IV, 5) and inventive step are different criteria. The question "is there inventive step?" only arises if the invention is novel. PCT-Guidelines III Light of Later Knowledge In considering inventive step, as distinct from novelty (see paragraph and the appendix to chapter 12), it is fair to construe any published document in the light of subsequent knowledge and to have regard to all the knowledge generally available to the person skilled in the art at the relevant date of the claim.

7 Basic Definitions Novelty: - construe the claim in order to determine its technical ( structural, functional ) features Inventive step: - investigating ( technical ) effects ( activities, properties, functions ) or ( technical ) problems underlying the application and the closest prior art and eventually construct a logical chain connecting the prior art and the claimed subjectmatter Novelty: direct disclosure Inventive Step: indirect disclosure PS: correlation/separation of technical features/effects

8 genda Structure Some general Remarks on patentability; the difference between novelty and inventive step The different steps of the problem and solution approach - the text graphical representation as visual supplement using the PS during search and examination SR/SRR and PS as expert assessment of inventive step Examples from the Technical Boards of ppeal of the EPO Generalisation and further concrete Examples ( quantitative effects, evidence of inventive step, deviation, use claims )

9 Text In accordance with the "problem-solution approach" ( Rule 42 (1) c, Guidelines C-II, 4.5, 4.6 and C-IV, 11.7 EPC 2000; Guidelines 2012 F-II, 4.5, 4.6 and G- VII, 5 ), which is established jurisprudence of the Boards of ppeal, to assess inventive step on an objective basis it is in particular necessary to establish the closest state of the art forming the starting point, to determine in the light thereof the technical problem which the invention addresses and successfully solves, and to examine the obviousness of the claimed solution to this problem in view of the state of the art. This "problem-solution approach" ensures assessing inventive step on an objective basis and avoids an ex post facto. ( DG3 decision ) Problem-Solution-pproach The problem-solution-approach comprises three steps I identifying the nearest prior art II formulating an objective technical problem to be solved when considering the nearest prior art III deciding whether there is an inventive step

10 The problem is the problem The PROBLEM! - actual technical problem in a field - artificial problem created by the pplicant ( subjective problem ) - patent related technical problem - since the problem is directly related to the closest prior art it is a parameter of the PS (more/less ambitious/further/alternative) - the problem has not to be new!

11 genda Structure Some general Remarks on patentability; the difference between novelty and inventive step The different steps of the problem and solution approach - the text graphical representation as visual supplement using the PS during search and examination SR/SRR and PS as expert assessment of inventive step Examples from the Boards of ppeal of the EPO Generalisation and further concrete Examples ( quantitative effects, evidence of inventive step, deviation, use claims )

12 Graphical representation of novelty (rendering structural/technical features) closest prior art (similar purpose, most technical features in common) claimed subject-matter Replacement F2, F2 (red) : distinguishing structural/technical features; (green) triangles : activity, effect, property, function, (blue) rectangles: common technical features

13 Graphical representation of novelty (rendering structural/technical features) closest prior art (similar purpose, most technical features in common) claimed subject-matter Replacement F2 ddition (combination), F2 (red) : distinguishing structural/technical features; (green) triangles : activity, effect, property, function, (blue) rectangles: common technical features

14 Graphical representation of novelty (rendering structural/technical features) closest prior art (similar purpose, most technical features in common) claimed subject-matter Replacement F2 ddition (combination) Deletion, F2 (red) : distinguishing structural/technical features; (green) triangles : activity, effect, property, function, (blue) rectangles: common technical features

15 Graphical representation of novelty (rendering structural/technical features) closest prior art (similar purpose, most technical features in common) claimed subject-matter Replacement F2 ddition (combination) Deletion Selection, Overlap or, F2 (red) : distinguishing structural/technical features; (green) triangles : activity, effect, property, function, (blue) rectangles: common technical features

16 Most general abstraction of the PS using novelty rendering features closest prior art (similar purpose, effect, use, property; most technical features in common) claimed subject-matter M obvious? M F2 => F2: -replacement -addition -deletion -selection (overlap) M' + M', M'' Teaching/combination from the prior art, common general knowledge F2,F2: characterizing portion; distinguishing technical features; : activity, effect, property, function; M,M',M'': equivalents, analogues, synonyms (in the same or similar technical field); prior art features

17 genda Structure Some general Remarks on patentability; the difference between novelty and inventive step The different steps of the problem and solution approach - the text graphical representation as visual supplement using the PS during search and examination SR/SRR and PS as expert assessment of inventive step Examples from the Technical Boards of ppeal of the EPO Generalisation and further concrete Examples ( quantitative effects, evidence of inventive step, deviation, use claims )

18 Graphical representation of the 'empiric rule' "Structure-activity-relationship" prior art Patents Research Laboratory new subject-matter Reviews structure-property-relationships structure-function-relationships structure-odour-relationships structure-toxicity-relationships Str, Str' -replacement -addition -deletion -selection (overlap) known structure SR new structure ' Str Str' Str,Str': chemical basic structures; green,': activity, property; effect; function; Definition: SR: if Str ~ Str' => then ~ ', red: novelty (by: replacement, addition, deletion, selection)

19 Structure-activity-relationships (SR), nalogisation of lead compounds closest prior art (similar purpose, effect, use, property; most technical features in common) claimed subject-matter R obvious? R' M M R,R': + R R' -replacement -addition -deletion -selection (overlap) M' + M' Teaching/combination from the prior art, common general knowledge; reaction mechanism; pharmacophor(ic group); known lead compound R, R': common substituents; M, M': (analogous) families of compounds; : activity, property; novelty R => R' ( distinguishing features )

20 Simple concrete example of the analogisation of substituents of a basic skeleton closest prior art (similar purpose, effect, use, property; most technical features in common) claimed subject-matter Cl CF 3 obvious? + Cl CF 3 + Teaching/combination from the prior art, common general knowledge (SR) : (biological) activity, property; substituents Cl, CF 3 ; similar basic skeletons: phenyl, naphthyl; novelty : Cl => CF 3

21 nalogisation of the Basic Skeleton closest prior art (similar purpose, effect, use, property; most technical features in common) claimed subject-matter R x R x S obvious? S' R x ' R x ' S + S' Teaching/combination from the prior art Rx, Rx' :Substituent pattern; S, S': (analogous) families of compounds, : activity, property; novelty S => S' (e.g. bioisosterism)

22 Structure-reactivity-relationships for organic-chemical reactions, LFER closest prior art claimed subject-matter M1 + M2 => M3 M1' + M2' => M3' F2 F3 F2 F3 + reaction mechanism + F2 => F3 combination from the prior art, common general knowledge,f2,f3: functional groups; M1,M2,M3:molecular basic skeletons; novelty: M=>M'

23 Example of a structure-reactivity-relationship Reaction of (carboxylic) acid with alcohol yielding ester closest prior art claimed subject-matter R 1 + R 2 => R 3 R 1 ' + R 2 ' => R 3 ' CO 2 H OH CO 2 R 2 CO 2 H OH CO 2 R 2 ' combination from the prior art reaction mechanism acid + alcohol=>ester R-CO 2 H + R'-OH = R-CO 2 R' Simple example for the reaction of functional groups

24 genda Structure Some general Remarks on patentability; the difference between novelty and inventive step The different steps of the problem and solution approach - the text graphical representation as visual supplement using the PS during search and examination SR/SRR and PS as expert assessment of inventive step Examples from the Technical Boards of ppeal of the EPO Generalisation and further concrete Examples ( quantitative effects, evidence of inventive step, deviation, use claims )

25 Graphical Decision T668/94 closest prior art (similar purpose, effect, use, property; most technical features in common) claimed subject-matter Fungicide Fungicide C(CO2R 1 )=CH-OR 2 C(CO 2 CH 3 )=N-OCH 3 Fungicide -CH=CH-C(CO 2 R 1 )=CH-OR 2 CH=CH-(CO 2 R 1 )=N-OCH 3 + Fungicide Teaching/combination from the prior art, common general knowledge Strobilurin nalogues, (za-)bioisosterism C => N, Fungicides

26 Graphical Decision T 641/89 (Tetroxoprim) pplying PS to reactions of functional groups claimed subject-matter closest prior art (similar purpose, most technical features in common) EP R- DE CH 2 -(CN)=CHOR 1 + Oxynitril ring closure => R- -NH 2 N N -NH 2 R- ring closure CH 2 -C(CN)=CH-NHR 2 + crylnitril Guanidin => R- -NH 2 N N -NH 2 Guanidin + ring closure DE N R'- CH 2 -(CN)=CH-NHR 3 + crylnitril => R'- -NH 2 N -NH 2 Guanidin Novelty : -N= => -O- ; R => R'; analogisation -OCH 3 => -O-(CH 2 ) 2 -CH 3

27 genda Structure Some general Remarks on patentability; the difference between novelty and inventive step The different steps of the problem and solution approach - the text graphical representation as visual supplement using the PS during search and examination SR/SRR and PS as expert assessment of inventive step Examples from the Technical Boards of ppeal of the EPO Generalisation and further concrete Examples ( quantitative effects, evidence of inventive step, deviation, use claims )

28 Variations of substituents, deviation from structure-activity-relationships closest prior art (similar purpose, effect, use, property; most technical features in common) cknowledgement of inventive step problem: inventive provision of a further/alternative subjectmatter claimed subject-matter M R obvious? B M R' R R' _ NO M' M' no possible combination from the prior art Novelty R => R' R,R': Substituents; M,M': (analogous) families of compounds; not B: different activity;

29 Quantitative effects, beneficial/advantageous effects closest prior art (similar purpose, effect, use, property; most technical features in common) obvious? claimed subject-matter F2 + F2 + Teaching/combination from the prior art F2 => F2: -replacement -addition -deletion -selection(overlap), F2: Novelty, distinguishing technical features; green triangles => : (improved) activity, effect, here: double activity; blue: similar prior art;

30 Use claims, second (non-) medical indication closest prior art (similar purpose, most technical features in common) claimed subject-matter Str obvious? Str B + B M',Str' M',Str' no limitation to RN!!! Teaching/combination from the prior art, common mechanism Novelty= replacement of use/activity =>B; M', Str, Str' : families of compounds, e.g. Isosteres, nalogues

31 Graphical Decision T 913/94 closest prior art ( most similar use, most common technical features ), Drug Des. 31, 799 (1981) claimed subject-matter (EP ) treatment of (experimentally induced ) ulcer treatment of gastritis resulting from inflammatory lesions GG B protection function => ulcer GG, prenyl ketone, geranylgeranyl acetone B reaction mechanism GG anti-ulcer mechanism due to maintaining the integrity of the mucosal barrier and prophylactic and curative treatment of ulcer textbook: same drugs can generate/predispose => gastritis and formation of ulcer Novelty: Different diseases, => B, Inventive step: prior art: common aspects in relation to the causative factors, same origin

32 Graphical Decision T 678/02 closest prior art (JP-63,121,260) obvious? claimed subject-matter (EP ) problem(s): -prevention of decomposing -improved life cycle capabilities -improved discharge performance and low temperature performance F2 non-aqueous sec. battery solvent :carbonate ester, e.g. PC/EC non-aqueous sec. battery mixed solvent: cyclic ester + chain ester e.g. DEC, DMC, MC + mixing ratio problem(s): -reduced ionic conductivity at low temperatures -desintegration of the electrode mixed solvent: cyclic + non-cyclic carbonates B F2 D4: US ,B F3 NOT: mixed solvent: cyclic (e.g. EC) + chain ester; DEC/DMC + third solvent methyl-thf D8: EP neither combination from the prior art nor from common general knowledge,b: no equivalents; : anode: carbon; cathode: LiCo2; B: anode: Li (alloy); cathode: org. polymer; different electrode systems/ different, electrochemical processes of the different electrode systems, though similar effects => different problems

33 ( Non-chemical ) Process claims and PS cpa problem: further/alternative process 1. step 2. step B 3. step C claimed subject-matter F2 1. step 2. step C 3. step B + F2 B common general knowledge 1. step 2. step B 3. step C 1. step 2. step C 3. step B problem: unexpected effect (qualitative/quantitative)

34 Graphical Decision T 754/89 ( Epilady #1 problem) US : closest prior art (similar purpose, most technical features in common) linear spring, feminine cosmetics hair plucking device, similar concept EP claimed subject-matter: pparatus for hair removal M rubber rod with slits obvious? M F2 helical spring (different concept/ mechanism => F2: -replacement -addition -deletion -selection (overlap) CH ; rotating spring; no motor means M F2 M US , linear spring, poultry plucker, similar concept Teaching/combination from the prior art, common general knowledge,f2: characterizing portion; distinguishing technical features; : ( qualitative/quantitative ) activity, effect, property, function; M : preamble; prior art features in the same or similar technical field;

35 Graphical Decision T 754/89 ( Epilady # 2 problem) US : closest prior art (similar purpose, most technical features in common) EP claimed subject-matter: pparatus for hair removal M rubber rod with slits obvious? M F2 helical spring (different concept/ mechanism) => F2: -replacement -addition -deletion -selection (overlap) CH ; rotating spring; no motor means M ; US : linear spring, poultry plucker, similar concept F2 M // Teaching/combination from the prior art,f2: characterizing portion; distinguishing technical features; : ( qualitative/quantitative ) activity, effect, property, function; M : preamble; prior art features in the same or similar technical field;

36 Graphical representation of novelty (rendering structural/technical features) closest prior art (similar purpose, most technical features in common) claimed subject-matter Replacement F2 ddition (combination) Deletion Selection, Overlap or, F2 (red) : distinguishing structural/technical features; (green) triangles : activity, effect, property, function, (blue) rectangles: common technical features

37 Some consequences to keep in mind or what did we learn? Novelty: - direct disclosure, technical features Inventive step: - indirect disclosure, equivalents/analogues/modifications; technical effects/activities/properties/functions correlation/separation of (technical) features ( novelty )<=> (technical) effects ( inventive step ) technical problem is a parameter of the PS ( e.g. more/less) ambitious, further/ alternative ) PS: mandatory for search and examination => limitation of the number of documents PS opens a dialogue with the pplicant inviting him to take position ( parameter: problem ) being too generous for inventive step will lead to an increase in the number of trivial patents granting too minor developments ( trivial patents ) might lead to a lack of credibility of the patent system

38 Some conclusions graphical representation of the PS allows standardisation (independent from any personal knowledge) reproducible, expert, quick, reliable assessment being abstract the visual formalism allows a nearly objective and expert assessment of inventive step ( in chemistry (SR/LFER is PS ) graphical verification/representation as visual supplement of the text generalisation of structural/functional => technical features => general application in all fields meeting the graphical novelty approach quick visual check for identification of a trivial patent possible

39 Publications: J. Stellmach, CIP Journal 38 (10), 674 (2009) J. Stellmach, World Patent Information 31, 4 (2009) J. Stellmach, Prop. Ind. 8, 21 (2009) J. Stellmach, Mitt. 98, 542 (2007) SR: J. Stellmach, World Patent Information 31, 226 (2009) J. Stellmach, Prop. Ind. 4, 26 (2006) J. Stellmach, GRUR Int. 54, 665 (2005) SRR/LFER: J. Stellmach, World Patent Information 33, 11 (2011) J. Stellmach, Mitt. 98, 5 (2007)

40 END Thank you for your attention! Questions????