Obviousness: what’s the problem?

Abstract

... The established case law of the Boards of Appeal of the European Patent Office (EPO) influences the thinking of patent judges in courts all over Europe. Notably, on the question what any given document ‘discloses’ to a person skilled in the art, legal thinking on priority, novelty and added matter is slowly condensing around the EPO’s so-called ‘Gold Standard’. On the stand-out issue of obviousness, however, courts in Germany1 and the UK2 remain less than fully convinced by the EPO’s thinking, and courts in The Netherlands contemplate exceptions to it, even though how the EPO does it, with its ‘Problem and Solution Approach’ (EPO-PSA), is at least as strongly ‘established’ at the EPO as its jurisprudence on novelty. Where’s the problem? At the heart of EPO-PSA is the determination of what is called the ‘objective technical problem’, the OTP. It is this determination which squeezes hindsight subjectivity out of the obviousness analysis, but it is also this determination which the courts of England and Germany eschew. Perhaps it strikes them as a dereliction of their duty to look at obviousness holistically, taking into account all the circumstances known by the time of trial, to submit to the EPO’s extremely rigorous methodology. Apart from that, the English courts hold to the fundamental tenet, that no approach is legitimate that appears to displace or pre-empt the seemingly irreducibly simple statutory question ‘is it obvious?’.