Patently-O Bits and Bytes No. 43

  • Obviousness Essays: Lewis & Clark has published results from its Obviousness symposium. [LINK] Papers include Duffy’s thoughts that the timing of an invention helps determine its obviousness; Mandel’s argument that KSR stinks because it does not truly account for hindsight bias; Eisenberg’s predictive analysis of KSR’s impact on pharmaceutical patent protection; and Miller’s suggestion on how courts should determine PHOSITA’s skill level.
  • Prior Art blog discusses Little League Trademark Infringement. [LINK]
  • Director Dudas Responds to Congressional Critics [File Attachment: dudas.ltr.pdf (2048 KB)]

112 thoughts on “Patently-O Bits and Bytes No. 43

  1. JD — in addition to your accurate characterization of the silly game, I often get rejections where the examiner simply finds each of the claim elements in various unrelated references, cobbles them together and then uses the advantages of the invention in the examined application as the reason for the cobbling. (i.e. hindsight) But then that is the way the PTO seems to be structured today — the examiner gets punished when he allows an application and gets rewarded when the applicant is forced to file RCE’s (often because appeals are very expensive and very backlogged) or the client runs out of money and/or patience and abandons the application.

  2. I think the EP examiners’ focus on finding D1 is what makes the difference. EP examiners are not interested in this silly game of “Well, if I give this claim term its broadest unreasonable interpretation, and I stretch this reference from a completely non-analogous art so completely beyond recognition, and then fill the gaps in that completely ridiculous stretch with some boilerplate case law, that I’ve never read, and that everybody knows says that it’s inherently obvious to routinely optimize everything in the prior art through experimentation, I’ll show this attorney how badly this is overclaimed” that US examiners love so much. And are encouraged to play. And are rewarded for playing.

    I don’t know. That’s just my guess.

  3. “EPO searches are definitely better than those done at the USPTO, on the whole, but it is hard to find one single reason.”

    I’m not familiar with EPO, but they can’t be hiring as much as the PTO and thus would be more likely to have a more developed workforce? Contrast that to the PTO which hires just about anybody with a science/engineering degree.

  4. EPO searches are definitely better than those done at the USPTO, on the whole, but it is hard to find one single reason. It could be how much time they have. It could be that in the EPO they try to search for the inventive step instead of for the claim language (personally I think that’s very important). It probably isn’t the search software. The fact that the EPO examiner can read art in at least three languages instead of one probably helps, but that’s not it by itself.

  5. Can we all hold hands for just a moment so that we can gain the necessary clarity?

    Thanks.

    And thank you jtydog…

  6. Curious: it’s something theoretical, to do with the heirarchy of knowledge stored in a database, that explains why the EPO search is good and the USPTO one less so. I say again, ask the theoretical information scientists, the specialists. Myself, I can’t be faffed to try to understand, because I have more interesting stuff to do. The EPO must address method and apparatus as two aspects of a unitary inventive concept, for which only one search act is necessary and sufficient. Would you like some of that, in your PTO? Then adopt the IPC, and switch to the EPO concept of what constitutes a patentable contribution to the art.

  7. Was it not you, pds, who challenged me, about 100 posts up above, to set out the PSA approach? You seemed interested enough in it back then. But that was only so you could rubbish it when I delivered my tutorial, right. PSA is simple, pds, but not that simple, as a great many people now know. Riding a bike is also simple, but only after you have worked hard to master it. There are plenty of others that fit the old proverb “There’s none so blind as those that will not see” BTW, a lot of US patent attorneys do care, whatever you write about “nobody”.

  8. I’m sorry to break this to you, but you can probably count on one hand the number of people on the other side of the pond who give a rat’s ass about PSA.

    PSA is nothing more than a simple little method that does not reflect reality but is simple enough that the civil law folks, EPO examiners, and inventors can understand it. Basically, it is a stripped down version of US obviousness analysis.

    As for your comments regarding “[d]o they not realise that PSA has been attacked since its conception 30 years ago, by Europe’s finest legal minds, all without success,” you sound like a used car salesman or some late-night huckster on the tely selling a weight-loss product.

    The reason why almost nobody responds to you (I made an exception this thread) despite you being one of the most prolific posters on this board is that your comments are bereft of intellectual substance. Instead, your posts (just like this last one) are chock full of meaningless puffery and platitudes.

    You’ve been cheerleading the EPO system for years …. why don’t you give it a rest? Nobody cares.

  9. pds

    Thanks for your summary, I agree with you especially with that there should be little real difference between the US and EPO examination.

  10. Max Drei

    “The USPTO can’t catch up just by buying the EPO search tool. It’s more fundamental than that. Ask an information scientist.”

    Does this mean that USPTO examiners are not smart enough to learn how to use the EPO search software?

  11. Dear All, just to close this thread, let’s sum up:

    1. The EPO search is better. The USPTO can’t catch up just by buying the EPO search tool. It’s more fundamental than that. Ask an information scientist.

    2. The EPO way of law is different, civil law not common law. Ask any patent lawyer who operates at a global level eg in GSK or somewhere like that. You can’t take a civil law idea out of the EPO and apply it in the US common law patent system and expect it to work. Ask the GSK lawyer again. The US legal system will continue to compete with that of ROW. Well-wishers from England will continue to chivy the USA because they see from their own experience, of England in Europe, what happens when common law competes with ROW civil law. They can see from their own experience what aspects of common law are key, and which are not.

    3. The patronising ignorance of those who pooh-pooh PSA would be funny, were it not so sad. Do they not realise that PSA has been attacked since its conception 30 years ago, by Europe’s finest legal minds, all without success? The vested interest of every court and every litigator in Europe lay in destroying PSA, yet it just gets stronger. There’s a reason for that, for anybody who can be arsed to find out. Do the negative commentators on this blog think they can see something that has eluded Europe’s finest, these past thirty years? I leave it to the other readers to draw proper conclusions.

  12. Thank you, Lurking Prosecutor.

    Wonder why the USPTO doesn’t license that EP search software. Might solve a lot of our problems.

  13. “You convince Applicant to pay lots of money for the personal interview.”

    A personal interview may have value prior to the first rejection as it gives you and the examiner about the claims/references to be cited in a non-adversarial manner. However, I would never convince the applicant to pay lots of moeny for a personal interview. You used to be able to get an agreement as to allowance with the examiner and be able to rely upon it … not now. If all I’m going to do is overcome the current reference and expect a new (yet probably equally bad rejection), I’ll do it with a written response.

    “Sadly, many cash-strapped Applicants don’t want to pay for the merry-go-round and even if they do, they don’t know what it will cost and how long it will take.”
    The thing is that I force the Examiner to go to an appeal conference and write an examiner’s answer, which lead to a much better chance as to having a positive outcome. Once you’ve written the first appeal brief, the second and subseuent appeal briefs are easier to write.

    As the systems are set up, there should be little difference in how the EPO/USPTO handle patent applications. However, the differences I have seen rests in the institutional attitudes of the respective agencies towards agencies. Regardless, given the costs of foreign associates versus an average cost of a US practitioner, it isn’t worth it filing in Europe.

    Combine this with whether or not the client sells product in Europe and the cost of litigating in Europe (as well as the uncertainty … e.g., win in Germany yet lose in England), filing in Europe just isn’t cost effective for most clients.

  14. Curious,

    EPO examiners have much better search tools than US examiners. I forget the name of the software but it is a big difference. Any practitioner who has prosecuted both us and ep applications will tell you this. Rarely do I get poor art from epo examiners, whereas most of the time I get poor art from uspto examiners. Then again, uspto examiners actually let me amend.

  15. I must just have to agree with Max, PSA-Denier and Teacup, but must comment on pds’ 1:01 letter

    “Are you saying then that the Examiner at the EPO so perfect that they never make a mistake”
    No, but EP examiners are alloted more time and have better search tools than the USPTO Examiners so they usual find and apply relevant prior art. Then the PSA process described by teacup at 10:43 is followed. From the first action, even if nothing is indicated as allowable, you can use your intuition to guess what claims you will ultimately get.

    “If that is really what you think, I suggest that you put down the rose-colored glasses and whatever MadMax is drinking”
    Sadly, Max has not offered me anything. I assume it will be an Irish or Scotch whisky, which can be fine, but I prefer French cognac.

    “For example, what do you suggest to do if an Examiner were to cite a document written in an esoteric language? Let’s try to work with realistic examples.”
    You’ll have to trust me on this one.

    “I don’t usually trust examiners. Actually, I would have trusted them prior to the second set of eyes program, but not now.”
    I did not explain myself well. An action seems unreasonable. You convince Applicant to pay lots of money for the personal interview. You have a pleasant interview with favorable results. Turns out Examiner (or Ms. Second Pair of Eyes) was joking and sends a new rejection. That you did not trust the Examiner does not help you as you are still facing two actions before you can go to Appeal.

    “One of my enjoyable activities … taking the examiner on my no-count merry-go-round”
    If I am not mistaken, you must address the new grounds of rejection which costs money.
    Sadly, many cash-strapped Applicants don’t want to pay for the merry-go-round and even if they do, they don’t know what it will cost and how long it will take.

    “I know (because I’ve been told by the client) that this tactic reduces the number of actions before allowance”
    I agree that in retrospect, this may be most cost-effective (which may explain the new Appeal rules) but it is time consuming and unpredictable.

    That brings us back to the original problem. Not so long ago (3-4 years), a US patent was much more cost effective than an EPO patent. Only rarely did you need to go to Appeal. Now US patent grant is so unpredictable in terms of time (especially when you start appealing), cost and ultimate scope of claims that it is, in my opinion, less cost-effective than an EP patent.

    Then again, maybe I have been lucky with the EP and unlucky with the USPTO.

  16. PDS: is Teacup mad as well? He seems to have a fair old grasp of PSA in practice. And Mooney, who succinctly commented above that over-claiming is good practice at the USPTO because 1) it might lull a prospective licensee and 2) Applicant might get lucky. Rather suggests to me that going to issue with an over-broad claim gets you an edge, in the USA. It doesn’t in Europe. For as long as it continues to get you an edge, you will continue to endure the vituperation and acrimony at the USPTO. And from somebody with such ignorance of how PSA works in practice, it is embarrassing to read from you how ignorant I am.

  17. “TSM/KSR are all methodologies (each requires various steps to be performed). They are also a test, such like PSA. As such, you attempt at a distinction is illusionary.”

    When you’ve already decided the answer, a test is a methodology and a methodology is a test. I realize I’m probably directing this to someone who’s already made up his mind, but there is a difference between TSM and PSA. If I didn’t encapsulate it to your satisfaction in the above post, then allow me to try again:

    1) under PSA, what is the closest reference is open for debate and is not simply the first reference the examiner throws at you. Under TSM, there is no closest reference, only various “primary references.”

    2) under PSA, when the closest reference is established, the debate advances to whether the gap between it and the claim is obvious in view of an objective problem. Under TSM, there is no objective problem, because “the primary reference is so far afield from the claim that, with all due respect examiner, the claim is not obvious.” Or maybe there is no objective problem because the inventor is not trying to solve that problem or the art makes no mention of that problem. (Granted that US practitioners are loath to admit that any reference is close, never mind the closest, is probably a byproduct of prosecution history estoppel.)

    3) under PSA, if you can show that the leaping the gap is not obvious, you get a patent. Under TSM, you might get a patent, or you might get another obviousness rejection with another primary reference which may be closer than the first but is likely further.

    At times TSM can look like PSA, and this mostly occurs when the US examiner is organized and logical.

  18. “My second point is that it’s the presumption of validity that is so damaging to cordial relationships between Exrs and prosecutors. The presumption rewards gatecrashers. Once you’re past the PTO door-keeper, you can gorge on the fruits of issue, without ever being thrown out.”

    Are you for real???? It is comments like this that absolutely crush you already limited credibility. Really, have you any experience with US prosecution? I’m serious, as your comment evidences a level of ignorance only surpassed by 6K at his height of blathering.

    Do you really think that once a “gatecrasher” get a bad patent issued in the US that there is nothing available to get the gatecrasher (and presumably his patent) “thrown out”? I hope that isn’t what you are saying, because if you are, then you really are in sad shape.

    BTW: I used the expression Mad Max at least several months ago.

  19. “I agree. This is where PSA shines. It’s a methodology as opposed to a test.”
    TSM/KSR are all methodologies (each requires various steps to be performed). They are also a test, such like PSA. As such, you attempt at a distinction is illusionary.

  20. “TSM broke down in the USA because examiners would accept anything where there wasn’t explicit TSM, hence KSR, which seems to have been seized with both hands by the USPTO to reject, reject, reject.”

    There may have been some examiners that relied upon a strict adherence to TSM prior to KSR, but most examiners did not and still were able to meet the USPTO goals of “reject, reject, reject.”

    “PSA breaks down at the EPO when examiners insist as using it to justify rejection even when it is plainly inappropriate; i.e. where the relationship between the prior art and the claim is such that the gap between the claim and the closest prior art cannot be bridged plainly and logically by TSM and/or (realistic) “common general knowledge”.”
    Unless one where MadMax’s rose colored glasses, your observations are dead on. Like 6K’s dread overclaim, the examiners of both the EPO and USPTO employ the dreaded over-rejection, which is a rejection claims based on inappropriate art and/or arguments. There is nothing magical about EPO (at least MadMax hasn’t admitted to anything) over TSM or KSR. When applied properly it establishes obviousness (or lack of inventive step). However, like most tests, it can be abused.

  21. “The greatest value of the PSA is that it provides a relatively straightforward formula that, up to a point, can be applied by examiners from many disparate backgrounds in a way that creates a fairly level playing field for applicants. As I said upthread, PSA and TSM work best in providing a robust basis for an obviousness rejection in those cases where there is some TSM in the prior art.”

    I agree. This is where PSA shines. It’s a methodology as opposed to a test.

    I prosecuted US patents in the heyday of TSM. Just when you whacked one obviousness rejection, a new and totally different one would pop up. After a few rounds of this, either the examiner got tired of arguing and allowed the application or you got the feeling that he was going to forever apply whichever randomly selected TSM art that would sustain his distaste for the claims. The structured debate enabled by PSA is like mana from heaven compared to this.

    But PSA is a tool like any other. If its wielders don’t know how to use it or use it for the wrong purposes, it will fail. That’s what happened to TSM. TSM is too easy to abuse.

  22. Thanks Denier, here my quick reaction to finish off the week-end stint.

    My first point is that PSA, and only PSA, theory, defines terms of reference (two fixed points and the gap therebetween) of a rigorous obviousness debate. Respondents above are coming back with assertions that people don’t apply PSA rigorously. Whether or not that’s true, it doesn’t by itself puncture my PSA balloon. I will go out on a limb again, and assert that the more opposition cases an EPO practitioner handles, to Appeal Board level, and for just as many patent opponents as patent owners, the more loyal such practitioners are to PSA. Examiners just joining the EPO haven’t yet learned to ride their PSA bikes with aplomb, just yet.

    My second point is that it’s the presumption of validity that is so damaging to cordial relationships between Exrs and prosecutors. The presumption rewards gatecrashers. Once you’re past the PTO door-keeper, you can gorge on the fruits of issue, without ever being thrown out. Therefore, don’t be surprised when conscientious attorneys reckon to earn their crust by gate-crashing the issue party. See Mooney above.

  23. Apologies for dropping out of this interesting discussion over the weekend.

    Teacup said: “I’d be interested to know if you’ve prosecuted in the US and had to face the hodgepodge of “it looks obvious to me” type rejections that are so common. You seem to be suggesting that PSA is not perfect. Nothing ever is. But what the US has now is a mess. If I may elaborate on Max’s original point: the US should not be bashful in looking to Europe for answers to this problem.”

    I’ll be honest, I don’t see much of this kind of thing from the USPTO. What I do see are novelty rejections based on bald assertions that all kinds of independent and dependent claims are anticipated by prior art references that bear only a passing resemblance to the subject matter of the claims, with the vaguest of references relating claim elements to parts of the citation. After laboriously refuting such assertions, a further action typically arrives with a newly cited prior art reference providing the basis for new but equally ill-founded novelty rejections. Round and round and round it goes, without any meaningful dialogue because the basis for rejection keeps changing.

    Broadly (there are always exceptions), my experience is that examination at the EPO is generally more logical and predictable than at the USPTO.

    My only real quibble with Max is that I think he goes way over the top in hailing PSA as some kind of latter-day Occam’s razor that somehow resolves all questions of obviousness in the twinkling of an eye.
    I’ve been dealing with the EPO since my professional infancy in1984, when the EPO itself was still very young. In that time, the examiner corps has expanded hugely, bringing in new members from all of the new EP states as they have joined up. The greatest value of the PSA is that it provides a relatively straightforward formula that, up to a point, can be applied by examiners from many disparate backgrounds in a way that creates a fairly level playing field for applicants. As I said upthread, PSA and TSM work best in providing a robust basis for an obviousness rejection in those cases where there is some TSM in the prior art.

    TSM broke down in the USA because examiners would accept anything where there wasn’t explicit TSM, hence KSR, which seems to have been seized with both hands by the USPTO to reject, reject, reject.

    PSA breaks down at the EPO when examiners insist as using it to justify rejection even when it is plainly inappropriate; i.e. where the relationship between the prior art and the claim is such that the gap between the claim and the closest prior art cannot be bridged plainly and logically by TSM and/or (realistic) “common general knowledge”. In my experience this is sufficiently common that the option to appeal is not a satisfactory answer under EPO practice.

    I think there is an increasing tendency at the EPO for examiners to take the “it looks obvious to me” stance and then to attempt to justify their view by fabricating a very poor PSA argument.

    There simply is no easy test that can rigorously decide questions of obviousness in all cases.

    One approach would be, as a matter of policy, to give the benefit of the doubt to claims that pass TSM/PSA (preferably with some reasonable general knowledge element built in). There can then be no presumption of validity and there needs to be an economical way for interested parties to put validity to a more rigorous test (re-exam/opposition). This approach “lowers the bar” and puts more of a burden on third parties – with the corollary that less resources expended on basic prosecution means that more resources are available for inter partes dispute resolution.

    The other possibility, of raising the bar so that there can be a reasonable presumption of validity, must necessarily mean that fewer patents will be granted, but this can only be done fairly on the basis of well-resourced and well-reasoned examination by the PTOs, not on a management-driven policy of reject, reject, reject.

  24. “People like yourself and 6K remind of the students that came out of law school final exams exclaiming that the test was easy and straightforward. There were also the students that came out of the exams talking about all the stuff they missed. As it turned out, the ones that thought the test was easy were usually the ones that did very poorly, and the ones that knew the stuff they missed did very well.”

    I learned that one long ago. E school is of course 4 years of hel that basically teaches you that principle. If the problem ever seems simple you’d better look twice. I’m not one to fall too easily for that anymore.

    “Actually, the best thing to do is authorize an examiner’s amendment only if the claims are placed into a condition for allowance.”

    Examiner’s amendments are for the birds. All examiners out there, just make them efile a supp amendment, fast, easy, and all the hassle is theirs. They also get all responsibility for the content of the claims.

  25. Lurking: how about sharing with us the serial number of the app at the EPO where the EESR cited “terrible” art? In the EPO, claims mean what they say. Thus (in contrast to 35USC112 land) a “receiving means” is “anything under the sun that receives something” and no amount of nodding and winking towards to spec will change that meaning. That’s quite wide enough to justify an objection based on “terrible” art. EPO Exrs have learned that US attorneys don’t take it kindly when told that their claim isn’t clear. So, instead, EPO Exrs cite “terrible” art and assert that it takes away novelty, to shock the rep into writing clear claims that patentably distinguish from the art, even when the claim is given its broadest reasonable construction. Take another example; what’s the scope of a claim element “Ball for playing soccer”. Ever seen what objects the kids can use as a football in, say, Rio de Janiero? Hey pds, you’re welcome to call me MadMax, if it makes you feel better. I like it. I take it as a compliment to my communication skills. We both know that at least two of your fellow readers appreciate my contributions.

  26. “With the EPO, with the first Office Action you can usually make a pretty reasonable guess as to what claims will ultimately be granted.”

    Are you saying then that the examiner at the EPO so perfect that they never make a mistake, and thus, what the EPO examiner indicate as being allowable in the first action is what will be allowed? If that is really what you think, I suggest that you put down the rose-colored glasses and whatever MadMax is drinking.

    For example, what do you suggest to do if an Examiner were to cite a document written in an esoteric language?
    Let’s try to work with realistic examples. I’ve seen lots and lots and lots of prosecution in my day, but I’ve NEVER seen an examiner cite a foreign language reference beyond what was described in the English-language abstract, shown in the drawings, or found in a machine translation.

    “What do you suggest to do if an Examiner indicated, after a reasoned discussion and a pleasant personal interview, that a certain claim would be issued after minor (and acceptable) amendments? It seems that you would make the amendments rather than appeal. But what happens if the Examiner then finds new art to issue a new non-final? I believe that E6K has indicated that he can do this in excess of 100 times.”
    I don’t usually trust examiners. Actually, I would have trusted them prior to the second set of eyes program, but not now. Actually, the best thing to do is authorize an examiner’s amendment only if the claims are placed into a condition for allowance.

    “What do you suggest to do if after you file the Appeal Brief relating to a rejection based on irrelevant art, the Examiner finds new art and reopens prosecution? As in the above scenario, this can be done multiple times.”
    One of my enjoyable activities … taking the examiner on my no-count merry-go-round. If an examiner reopens (odds are the rejection is just as bad as the prior rejection), I just put them back into appeal. No fee for filing the appeal or for the notice of appeal. After a couple turns of this merry-go-round, the examiner either writes an examiner’s answer or the beg me to get off because each time they reopen, they don’t get a count.

    “Given endless Applicant resources, you are right that the Applicant can probably receive the deserved claims. However, small companies and entrepeneurs, the ones who most need patents, do not have endless resources.”
    I know (because I’ve been told by the client) that this tactic reduces the number of actions before allowance (as compared to other attorneys working for the client).

  27. Speaking of the quality of EPO examination – just today I wrote a response to an EPO search report that cited terrible art. I was surprised; it looked like something you’d see from the USPTO.

  28. pds

    In your 12:02 posting you wrote “a well-known concept in asset valuation is that greater uncertainty=less value” which is the point I was trying to make about USPTO prosecution being more expensive than EPO.

    With the EPO, with the first Office Action you can usually make a pretty reasonable guess as to what claims will ultimately be granted.

    In contrast, in the US anything can happen after a first Office Action. I agree with your comment that filing an appeal is probably more cost effective than filing endless RCEs, but it is not a panacea.

    For example, what do you suggest to do if an Examiner were to cite a document written in an esoteric language? I believe that you have no choice but to translate it, only to realize that it is irrelevant.

    What do you suggest to do if an Examiner indicated, after a reasoned discussion and a pleasant personal interview, that a certain claim would be issued after minor (and acceptable) amendments? It seems that you would make the amendments rather than appeal. But what happens if the Examiner then finds new art to issue a new non-final? I believe that E6K has indicated that he can do this in excess of 100 times.

    What do you suggest to do if after you file the Appeal Brief relating to a rejection based on irrelevant art, the Examiner finds new art and reopens prosecution? As in the above scenario, this can be done multiple times.

    Given endless Applicant resources, you are right that the Applicant can probably receive the deserved claims. However, small companies and entrepeneurs, the ones who most need patents, do not have endless resources.

    Again, I would not advise someone not to file with the USPTO: a US patent is still valuable. It is just that US prosecution is far more unpredictable and far less rational than with the EP.

  29. My experience with EPO practitioners:

    England – ridiculously overpriced and horrible service and/or quality.

    German – extremely overpriced and excellent service and quality.

  30. In that case, Lurking, it is instructive to study how England does common law patent litigation. Down at the fundamental level, not surprisingly identical to the USA. Discovery, x-exam, strict rules of evidence, Binding precedent, the lot. It’s just that, in real life, today, the two jurisdictions do it totally differently. England: a year to trial, even the blockbuster cases; no point in appealing because the first instance made no mistake in law. England today competes for the patent litigation business with all the other EPO jurisdictions. They are all perceived to be much cheaper. What natural predators frighten the awful maw of the US patent litigation beast?

  31. Max,

    The thing is that an US patent that isn’t appropriately lawyered will be as worthless as a one legged man in an ass kicking competition. The way I prosecute patents is shaped by what happens in litigation. There are many things I would like to do in my applications and during prosecution that I simply cannot do because it would be catastrophic when litigation rolls around.

    Therefore, in the US, it’s important to have attorneys draft applications because we draft in anticipation of litigation.

    It’s a different world, for sure.

  32. Lurking: quick reaction to yr interesting observations. American rules on how to construe a document are made by lawyers, for lawyers. In Europe, apps are written by patent attorneys (not lawyers) for the benefit of clients (not lawyers) and Exrs (not lawyers). Oppositions are decided by the Technical Boards of Appeal at the EPO, a tribunal of three in which only one is a lawyer. If the case gets as far as a court, it’s going to be in a language other than the one in the app. so substantial content trumps form of words, in spades. (Incidentally, that’s one reason why the EPO is so “hot” on confining Applicant’s reservoir of words for the prosecution amendment to the verbatim text as originally filed.) Have you any idea how difficult it is to translate a patent document from one language to another, without losing some of the original meaning. For us in Europe, American insistence on strict antecedent basis seems like lawyers playing lawyers’ games. Up above, I seem to remember that EPO Exr describing stuff incoming from the USA as “over-lawyered”. I think many inventors would agree. Nice way to put it, I thought.

  33. Plenty from pds to answer there. Many thanks.

    1. Clear with hindsight that my “businessman” was too glib. Readers, I apologize for my lack of precision. What I had in mind was the sort of business that anticipates one day needing in the IPR line “something to trade”. If I understand it right, from my clients, that includes tech companies and those who make medical devices. They need it in the USA and they might need it in Europe too, despite Europe’s many and varied incompetencies. Shareholders/partners/members of patent law firms are also “businessmen” I suppose, but not the sort of businessmen I meant. PDS, can you be, both at the same time, a competent practising patent attorney and a “business person”? I thought you were the first, therefore couldn’t be the second.

    2. Cost of patenting in Europe? Abolition of EPO issue translations out of English might make a big difference, specially if you are, say Toyota Motor, and need a patent only in France and Germany. The stats of relative cost haven’t yet got up to speed, on a newly stubborn USPTO and a Europe working under the London translations Agreement.

    3.Sometimes it is said that “The best inventions are the simplest” or, in science, “There is nothing so elegant as to simplify what seemed complicated”. I don’t accept that, in law, simplicity and fairness are mutually exclusive. Rather the opposite, I would say. The more complicated the law is, the more the likelihood that an outcome is tainted with unfairness.

    4. Uncertainty of enforcing in Europe? Tell me that again, after you have suffered the unnerving experience of being on the receiving end of an alert, vigilant patent owner (regardless of his nationality) that immediately petitions a court for interlocutory injunctive relief, the moment he sees you infringing his simple and robust patent claim.

    5. Cost of representation in Europe? I’m relatively expensive. All over Europe (34 member States in the EPO) there are European patent attorneys in private practice busting a gut to get my US clients away from me, with much lower prices, and some of them with a certificate of qualification by examination at the EPO. Why don’t you try your clients’ luck with some of them? But keep in mind: Put a foot wrong during prosecution and you might not have much in the way of enforceable rights when validity is put in issue (as in an EPO opposition). BTW, may I ask, purely out of professional interest, to one who urges Applicants to “stand up to” the Examiner, what’s your experience so far, with Art 100c (prosecution amendment adds matter) in EPO opposition proceedings?

  34. Just like US patent attorneys, EU patent attorneys are all over the place in terms of quality. I do a fair amount of prosecuting foreign originated applications that were filed in the US. Some are written pitifully and I cringe. Some are written really well and claimed very well. I could name a few EU firms which I would gladly hire and can name a few which I would NEVER hire based upon the work that I have seen.

    One big problem I see with a ton of EU originated apps is that they have all sorts of 112 defects, everything lacks an antecedent basis, etc. I don’t really understand this; I also prosecute a lot of applications before the EPO and those examiners won’t let you get away with anything. When I write an application that will be filed at the EPO, I take extra care to include all kinds of alternate language so that I can actually make an amendment, take extra care that nothing is ‘unclear,’ etc. (i think the EPO rules on clarity are that one of no skill in the art, who doesn’t speak the language the application is drafted in, must be able to instantly understand the limitations and structure of the claim after drinking approximately 7 pints of beer)

  35. “As someone who has examined many applications from Europe, I can say that the greatest number of inconsistently written specs that attempt to claim the whole world are from Europe, so your out-of-the-b_tt rantings about respect for Europe holds no merit whatsoever.”

    I usually cringe when I get an application written by non-US patent attorney. However, the applications definitely vary. Some of the best written applications I’ve seen were from Japan (although there were a few stinkers as well). This goes back many, many years, but the most poorly written (in terms of English grammar) application came from Australia.

    Recently, I’ve seen a lot of applications that fall on oppositive ends of the spectrum. On one hand, I’ve got the 15-20 word independent claim 1 that is both ambiguous and literally claims the world. Also, the main claim doesn’t even come close to claiming the essential concept of the invention. On the other hand, I’ve got the claims that literally will claim the most useless of limitations (i.e., board X connected to board Y with a screw made by Bob at ACME corporation during 2nd shift on a Friday). OK … I’m exaggerating but getting around some of the clams I see would be just as easy.

    This isn’t to say that US patent attorneys, as a whole, write good claims either. Like the USPTO, EPO, and the respective attorneys, sometimes you get somebody who knows what they are doing, but many times you get the work product of somebody very inexperienced (or somebody who may be experienced but just doesn’t care) and the work product reflects this.

  36. “As a result (in my experience) pds’ comment of 10:37 that US patents are cheaper than EP patents is inaccurate. The real cost of RCEs, CONs, appeals, withdrawn appeals, and reopened prosecution together with the lack of rationality renders prosecution of a US patent significantly more expensive than prosecution of an EP patent.”

    Please … you cannot be serious?

    If you are dealing with multiple RCE, CONs, etc., it is because you are dealing with attorneys that coddle examiners. The easiest thing in the world do to when prosecuting an application is to amend the claims and then state “reference X doesn’t show the limitations newly presented in claim 1.” As the examiner keeps doing this, you (as the attorney) keep amending the claims (and filing RCEs as necessary), and the examiner has no incentive to stop rejecting the application. On the other hand, it is much harder to, line by line, desconstruct the examiner’s logic/argument and explain why the examiner is wrong.

    I’ve commented on this before (probably several months ago), and this hasn’t changed since then but I doubt if I file one RCE for every ten appeals I file. In my experience, nothing gets an examiner more motivated to drop bad rejections than the pospect of writing an examiner’s answer. Look at it from the examiner’s perspective, they actually have to ANSWER all the arguments made by the applicant, which could take, in some instances, 2 or 3 pages of original writing. For engineers who, by nature, are very poor writers, this is a daunting task.

    My suggestion to you is to find counsel that isn’t afraid to stand up to the examiner. Force the examiner to do his/her job, and prosecution will go much quicker and much cheaper.

  37. “Funny that they still file in Europe despite your counsel against it. Perhaps that’s because they are businessmen, and you’re not.”

    Interesting that you make comments about someone you’ve never met. Not only am I a business owner, I’ve also received a couple years worth of education in “business.” I would venture a guess that my knowledge of “business” far exceeds your own.

    Even when the dollar was much stronger versus the Euro/Pound than it is today, filing overseas was always a luxury for those clients who had money to burn. For the money they spend in Europe (or elsewhere) they could be filing more patents in the US. Moreover, because of the uncertainty in obtaining/enforcing a patent in Europe, the value of the patents are less in Europe than in the US (BTW: a well-known concept in asset valuation is that greater uncertainty = less value). Unless a client expected to sell a very large amount of the patented product in Europe, they would get much better bang for their buck by filing in the US than in Europe. This is why I rarely counsel a client to file overseas because the cost-benefit analysis yields the result that better benefits can be achieved elsewhere for the costs incurred.

    Also, as I alluded to before, even before the dollar’s devaluation, filing in Europe was overly expensive. I cannot believe the prices being charged by foreign associates for some very simple projects.

    ” Me, I’d rather be before the EPO, arguing technical content under Rules of Play that are fair, and make sense to my clients and inventors.”
    As I noted earlier, simplicity rarely equals fairness.

    People like yourself and 6K remind of the students that came out of law school final exams exclaiming that the test was easy and straightforward. There were also the students that came out of the exams talking about all the stuff they missed. As it turned out, the ones that thought the test was easy were usually the ones that did very poorly, and the ones that knew the stuff they missed did very well.

    Patent law is far from simple. There is so much complexity and nuances to be considered with patent law that anybody who thinks it is simple is probably only scratching the surface. If the rules at the EPO are so simple to understand that even the clients/inventors understand it, then why do they need you? Moreover, why do they need to pay your (likely) exorbitant fees given the straight-forward nature of patent examination at the EPO? If it was easy as you think it is, more people would be doing it, and the supply/demand curve would reduce the costs of prosecuting.

  38. “Economic Theories of the Nonobviousness Requirement for Patentability: A Survey

    Vincenzo Denicolò

    12 Lewis & Clark L. Rev. 443 (2008)

    In the economics literature, there have been four main approaches to the nonobviousness requirement for patentability: option value, sequential innovation, error-cost, and complementary innovation. This Article reviews these approaches and discusses their limits. All of the approaches share the premise that patenting may impose negative externalities, and thus is not always socially beneficial. When innovation is sequential, for instance, granting patent protection to trifling improvements of a path-breaking innovation may lower the pace of technological progress. Similarly, the overall incentive to innovate may be harmed if every minor component of a complex technology is separately patentable. In such circumstances, it may be desirable to deny patent protection even to genuine innovations. ”

    Mind you, this is from the year 2008 rather than a year prior to 1800 when this gem of insight must have been readily apparent to all but those in law circles.

  39. Erez, thanks. I’m thinking that when the rigor of the step sequence in PSA is followed by both rep. and Exr the debate is over rather quickly, with no hard feelings on either side. I’m remembering the history of the Teleflex pat app in the EPO (the sister to the one in the “KSR to SCOTUS” case). The EPO Exr issued a FAOM in classic PSA form basing himself on the famous Asano cite. What happened? Applicant never even replied. End of story.

  40. MaxDrei:

    When an Examiner has good will, the post-KSR TSM can work just as well as PSA. When formulating an obviousness rejection, the Examiner should honestly believe that a PHOSITA would arrive at the invention when reading the art the Examiner has cited.

    Too often this is not the case, and the feeling is that the USPTO misapplies TSM as part of a bureaucratic war of attrition, bleeding funds from the Applicant with no intent of ever allowing a deserved patent.

    I agree with you that PSA is superior as it is more rigorous and tamper-proof than TSM. It keeps the discussion objective and prevents an Examiner from citing art that is totally irrelevant (personally I have never seen totally irrelevant art at the EPO, but maybe others have).

  41. Erez Gur: interesting remark. My point is that the PSA rigorous structure is indispensible, for framing an orderly debate. When you don’t have rules of debate, cacophany ensues. With strict Rules, as we see from the jurisprudence of the Tech Bds of Appeal of the EPO, outcomes are not surprising. Everybody knows what they are going to be, once the evidence is in. No room for the subjective opinion of the finder of fact and law. One day, courts in Europe will come round (for the time being the judges still don’t “get” PSA and the litigators have a vested interest in keeping obviousness complex), for PSA is fit to take us all the way to the national Supreme Ct (BGH or H of L). Not that we’ll be there to argue obviousness, of course, because there’s no more fact-finding at that exalted level.

  42. pds, relating to your 12:26 comment, and Malcolm relating to your comment of 01:17, I agree.

    The USPTO could use a properly applied TSM (using EP common general knowledge in line with KSR) and does not need to formally adopt PSA to get results having the high quality of the EPO.

    The problem with the USPTO is, apparently, that a decision was made to reduce the numbers of patents allowed with no consideration whether or not a given invention is patentable.

    As a result (in my experience) pds’ comment of 10:37 that US patents are cheaper than EP patents is inaccurate. The real cost of RCEs, CONs, appeals, withdrawn appeals, and reopened prosecution together with the lack of rationality renders prosecution of a US patent significantly more expensive than prosecution of an EP patent.

  43. To EP lurker:

    As someone who has examined many applications from Europe, I can say that the greatest number of inconsistently written specs that attempt to claim the whole world are from Europe, so your out-of-the-b_tt rantings about respect for Europe holds no merit whatsoever. Why do you Europeans have such an inferiority complex?

  44. Well now Soldier, are you being sincere, or are you being sarcastic and suggesting that civil lawyers should log off? On this blog, I find much of the former but an appreciable amount also of the latter. I have no reason to doubt your sincerity, so I will assume the former and say “Thank You, it’s nice to get a Thank You”.

  45. Readers, you now have from Lurker the civil law mentality. He’s no experience of operating in a common law “prove it” environment. Two worlds, and each with no understanding of the other. But Lurker has got a handy rule he can pull out whenever he needs it. In Lurker’s Patent Office, you lot get one shot at amendment as of right. One only. After that, you need Lurker’s consent before you can get your claim amendment in. So, if I were you lads, I would treat him with respect.

  46. Soldier, there’s a parallel BPAI thread running, with acrimonious exchanges between pds and 6K. Europe’s “no deference to Examiners” environment, together with a competent post-issue treatment of validity, would (paradoxically??) eliminate all that, and replace it with a more grown up environment (each takes responsibility for own actions) in which Applicants will want to mull over what Exr writes, just to ensure as far as is possible that the claims that issue will withstand non-deferential post-grant judicial scrutiny of novelty and non-obviousness. In Europe, the post issue tribunals that decide on validity in inter partes disputed procedings are specialist dedicated experts, who decide on a preponderance standard, after a contest between parties with equal rights of audience and evidence. Patent owners and their competitors surely deserve nothing less. Mind you, Europe’s national patchwork of litigation fora is a never-ending sovereignty nightmare. That’s one of our peculiar problems, in the less adversarial but still-a-long-way-from-united civil law States of Europe.

  47. To patentsoldier:
    I am an examiner at the EPO.
    Yes I get sometimes argumentation I doubt the attorney is believing in…
    But it does not matter much, I just decide on the merits as I see it.
    Just be aware that we are human, and can be offended if you are too blatantly pulling our leg, and that cannot be good for your client, nor for you. I can write the letter of response in a way to make clear the reason why we go in another round. Or we can have a nice Oral proceedings.

    Anyway, I don´t want to sound like E6k, but if you send me a too American application, like pds with its America_is_the_nostril_of_the_world’s way likely do, chance is that you have already used your bonus with me. Applications with a couple of independent claims – especially most not new on the first reading and so documented after 5 min searching – are not what you should do for winning the battle of the hearts. To copy-paste the over-lawyered US application is not the way to show a minimum of respect to the European patent law.

    Rant off, back to PSA, and a practical observation.
    We only actually go into the details and subtleties of it when we can not agree with the applicant under common sense over the invention. That is, for a minority of cases. Most of the inventive step written response are not perfect, state of the art PSA reasoning. It is time consuming to write a tight one!

    But the most common flaw in responses I see are the one asking me to stick to the problem or technical effect as defined by the application or the attorney. Wrong. You could argue why my problem/technical effect is a wrong one (hindsight,wrong closest prior art, teaching away…) but you will never limit me to consider only the problem as you described it and as it fit you by asserting it is my obligation in a PSA.
    Now your turn: tell me if you believe it when you write it.

  48. Mark, the statistic I recall is from a serious and well-connected American speaker at an AIPPI conference in Berlin about 5 years ago. He quoted something like: Retention after one year, EPO 97%, USPTO 70%. Should have thought the EPO has published stats and can confirm. To the audience, the EPO stat rings true. Exrs there do enjoy a cushy life. But maybe the US speaker had an axe to grind? The easy thing about blogging anonymously is that one can carelessly spit such thoughts up into the swirling wind, without much risk of them coming back to embarrass the spitter.

  49. Great comment PDS. Yes, please do bookmark. We can surely agree that clients should get the full picture. Funny that they still file in Europe despite your counsel against it. Perhaps that’s because they are businessmen, and you’re not. Soldier: that’s indeed a problem in Germany, which has a District Court to try infringement and a different Federal Court to try validity. Civil law has no file wrapper estoppal, no equity, no cross-examination and no Binding Precedent. The European Union is mostly shambolic (latest sign, the Ireland NO vote yesterday), but the substantive legal provisions of the EPC are a jewel amongst the dross.

  50. Max,

    At the EPO, does the applicant tend to argue one thing before the EPO to secure allowance, then turn around and argue something completely different before the court during an enforcement attempt? I ask because giving no deference to the work of the EPO prior to issue seems like an open invitation to do this. That is, most skilled attorneys can put together extremely well-formulated arguments about why their claim scope is narrow and easily distinguishes over the prior art, if only they don’t have to live with the consequences of those arguments.

    Does the EPO examiner get a cloud of arguments he’s not even sure the *applicant* believes? Evidently the fact that the applicant committed their argument to writing in the record means nothing.

    It would almost seem that except for the most clear examiner errors, the applicant is going to have to amend to get the case allowed at the EPO? Otherwise, it is too risky for the EPO examiner to grant patent rights based merely on “ephemeral” arguments, even if well-formulated.

  51. “Bear in mind that, years later, the German Federal Patents Court or the English Patents Court might be giving your issued patent the once, twice and three times over and, if it finds your property invalid, your client will want to know why.”

    That’s an easy question to answer …. the reason is because the client decided, against my counsel, to waste their money by trying to get a patent overseas instead of getting 2-3 more patents in the US with the same expenditure.

    I might have to bookmark your comments to give to clients interested in foreign filing.

  52. pds: something more, in case you miss it. In Europe, no deference is given, after issue, to the work of the EPO prior to issue. To the contrary, national courts will gleefully discover that the EPO was wrong to issue. Validity hangs on the preponderance of evidence. One bad claim renders the whole patent bad, so hope you can persuade a tribunal to admit your post-issue narrowing amendment (hope that it’s there, as a dependent claim). All in all, pay heed to what your friendly local EPO Exr notices, prior to issue. Use his/her observations on patentability to put your app in good robust shape before it goes to issue. Bear in mind that, years later, the German Federal Patents Court or the English Patents Court might be giving your issued patent the once, twice and three times over and, if it finds your property invalid, your client will want to know why.

  53. Let’s try to pull two disparate threads together.

    Retention: The EPO holds all but a few % of its new hires. Maybe that’s because the work is quickly rewarding and intellectually satisfying.

    Obviousness and the Rules of Play: PSA involves toggling between technical “features” and technical “effects”. From the thread above, it emerges that this toggling process is not intuitive, but has to be learned, like riding a bike. Whether, Malcolm, this toggling constitutes “Rules of Play” in any meaningful sense, I leave to you to critique.

  54. “I thought that the retention graph in Dudas’s answer was particularly interesting. In retrospect, it’s not a real surprise that there is about 40% turnover in the first three years. I would imagine that that is true for most entry level positions. It’s also not too surprising that “nature of the work” is the primary reason why persons leave. It might be very fruitful, however, to dig deeper into the “nature of the work” issue to see where even incremental improvements can be made.”

    Of course it’s easy to see why production problems drop off after 3 years. One word: RCE. The production system screws you for the first two years or so, you get no credit for work done “properly” until 6 mo goes by. If they’d fix that glaring problem with production then it’d cut retention problems in the first three years by half or more immediately.

  55. “Me, I’d rather be before the EPO, arguing technical content under Rules of Play that are fair, and make sense to my clients and inventors.”

    As I pointed out in the Kubin thread, MaxDrei, all this grumbling in the US about the “Rules of Play” under KSR has nothing to do with “hindsight” or “predictability” or “consistency” and everything to do with the fact that it’s harder to get a patent.

    That’s why, ultimately, very few pro-patent pushers really care about the EPO paradigm: the EPO does not issue enough (obvious) claims to make these people happy.

    Does the EPO sometimes utilize a bogus “problem” in formulating its arguments? Yes, it certainly does. But ultimately, even if a patent is not granted, I find that the record created at the EPO is typically more intellectually satisfying than that at the PTO, i.e., for equivalent $$$, I’ll get a more logically sound defense from the EPO of its position than I will from the PTO.

    But I don’t believe it has much to do with the different “Rules of Play” relating to obviousness.

  56. Max wrote, “Imagine the PHOSITA on the date of the claim being tasked with achieving the ‘technical effect’ that the claimed subject matter achieves.”

    So the key, it seems to me, is to couch the technical effect (or the problem) broadly so as to not give any suggestion of a particular solution — for instance, lower costs, faster, etc. — without talking about the particularly offending element in the prior art that, when compared with the alternative in the invention, seems expensive, slower, etc. Is this a viable approach?

  57. More interesting stuff in Dudas’ letter – the USPTO has teleworking employees in PA, NY, IL, NC, SC, GA, CO, TX, WV, and DE. Considering they have to report to DC once a week, I’m surprised by this geographic breadth. Depending on the pay, I bet not living in DC might convince more people to take a look at being an examiner. The USPTO could be like the WPA from the Great Depression days, though hopefully with more brains required.

  58. Well, that’s it then pds. We’re done. Proof of the pudding lies in the eating, and the same glass is either half full or half empty, depending on your outlook. Common law world incompatible with civil law world, every patent practitioner has their prejudices. Every client wants a lawyer than can actually win cases. Maybe some disinterested readers got something out of the thread above. Everybody else: carry on where you left off. Me, I’d rather be before the EPO, arguing technical content under Rules of Play that are fair, and make sense to my clients and inventors.

  59. “Thanks Also Anon. I think not. You are still using hindsight, and knowledge of the claimed invention, to formulate the OTP. That the PSA forbids, as unfair to the inventor.”

    That is just it – ALL obvious tests “forbid” hindsight, but all allow them in one way or another. Under your rose-colored analysis, it would seem that all parties in a patent procedure over in the EP agree as to what the OTP is as there is only one possible definition. I know from experience that nothing could be further from the truth. Setting the OTP is alomst always outcome determitive, and not an easy task to do, and requires subjective input.

  60. “The difference (as I see it) is that the framework to the debate (whether or not there was a TSM) is with PSA as rigorous as the evolution of thousands of opposition cases at Board of Appeal level, over 30 years by now, can make it. Everybody appearing before the EPO knows the “Rules of Play”. PSA was “invented” soon after 1978 when the EPO opened its doors. The Appeal Board members, seasoned patent jurists coming from 15 countries, had no cases yet. To prepare for the first wave, they rehearsed. That got them to PSA. Its been growing in unassailability (and refinement and power) ever since. By now there are 24 Boards all practising PSA. None defers to any of the others. All Board members jealously vie with each other to write the purest lines of legal logic, that will become the “landmark” Decisions most often quoted. No national Supreme Court tells those 24 Boards where their duty lies. They are the end of the line. No “Binding Precedent” in civil law Euro-land.”

    So …. as best can be determined from this statement, the difference between TSM and PSA is that TSM occurs in the US and PSA occurs in the EPO? Also, since there is no “binding precedent,” another difference lies in that an applicant/examiner has little guidance as to how a particular Board may look at a set of circumstances.

    Did I miss anything?

  61. Thank you PDS. The difference (as I see it) is that the framework to the debate (whether or not there was a TSM) is with PSA as rigorous as the evolution of thousands of opposition cases at Board of Appeal level, over 30 years by now, can make it. Everybody appearing before the EPO knows the “Rules of Play”. PSA was “invented” soon after 1978 when the EPO opened its doors. The Appeal Board members, seasoned patent jurists coming from 15 countries, had no cases yet. To prepare for the first wave, they rehearsed. That got them to PSA. Its been growing in unassailability (and refinement and power) ever since. By now there are 24 Boards all practising PSA. None defers to any of the others. All Board members jealously vie with each other to write the purest lines of legal logic, that will become the “landmark” Decisions most often quoted. No national Supreme Court tells those 24 Boards where their duty lies. They are the end of the line. No “Binding Precedent” in civil law Euro-land.

  62. PSA-denier, I’d be interested to know if you’ve prosecuted in the US and had to face the hodgepodge of “it looks obvious to me” type rejections that are so common. You seem to be suggesting that PSA is not perfect. Nothing ever is. But what the US has now is a mess. If I may elaborate on Max’s original point: the US should not be bashful in looking to Europe for answers to this problem.

  63. Thanks Also Anon. I think not. You are still using hindsight, and knowledge of the claimed invention, to formulate the OTP. That the PSA forbids, as unfair to the inventor. And anyway, I seriously doubt that you could find, even now, a pre-published document that actually says “If you want to maintain wiper speed, while wiping less often, what you should do is wipe internmittently”. Was there such a document?

  64. “Go back to the prio date. State of the Art is Continuous wipers. OTP: prolong wiper blade life. Was there any hint in the published state of the art that, if that’s your problem, you should move to intermittent wiping? If not, Bingo. Patentable invention.”

    Nice discussion of the TSM test.

    Find a primary reference, find a general goal (I mean “technical effect”) such as make it faster, more efficient, more robust (e.g., longer wiper blade life), cheaper, etc., and then find a hint (i.e., teaching, suggestion, motivation) in the prior art that leads to the combination.

    If this is how you are characterizing the PSA test, explain to me again what are the differences between these two systems of determining obviousness?

  65. Denier, it was you who said the “big” problem was Examiner error in the EPO. I was using “routine” to recite “your” problem, as I understood it. The problem is there, I agree, but I don’t see it as quite so frequent as you. Training in the EPO is a big tough task, what with new Examiners coming in from 34 countries, few of which use an official language of the EPO, and with the volume of new filings dictating that most cases are examined by individuals with only a very few years of service. Cases in French get examined by French native speakers. Caes in English very seldom by English native speakers. Not fair, eh? But those B publications in English have to pass muster in continental European courtrooms, no? That’s not fair either, I suppose. Only solution for English speakers, learn how to get one’s point across, to all those foreign-speaking continentals.

    PDS wants to know how the EPO handles “Problem” inventions. The above link to the Caselaw Digest will lead him to Decision T_0002/83. Crikey, that’s old. It was in 1978 that the EPO first received a patent application. The Appeal Boards got onto problem inventions really early.

  66. “Go back to the prio date. State of the Art is Continuous wipers. OTP: prolong wiper blade life. Was there any hint in the published state of the art that, if that’s your problem, you should move to intermittent wiping? If not, Bingo. Patentable invention. And it was, wasn’t it?”

    That would be fine, until the other side (in an opposition) or the EPO panel suggests that the OTP is how to automatically (i.e. without having a user turn on and off) wipe windshields less frequently while maintaining sufficient wiper speed to provide adequate results.

  67. Max

    OK, my message may have got a bit mixed there.

    You refer to the “routine TBA task of admonishing the OD or ED for an “Examiner’s failing” (not a PSA failing)”.

    If the Opposition Divisions and Examining Divisions “routinely” fail to apply the test correctly, then I submit that’s a failing in the test. That’s my point. The failure of ODs and EDs to apply the test correctly means, in general, that they revoke/refuse on inadequate grounds. That’s why it is unfair to applicants.

    Is PSA a bicycle or a unicycle? I know lots of people who can ride bicycles.

  68. Ah thanks for that pds. See what happens when, on the spur of the moment, one attempts a tutorial on an Approach that took 30 years of sustained attack to become unassailable.

    I forgot to say something fundamental about PSA: that defining the objective problem has to be done without any knowledge of the solution. Intermittent wipers prolong wiper life, save energy, do less damage to the windscreen. Whatever. Those are the technical effects. “Intermittent” is the X feature of the claim in view, that you are forbidden from writing into the OTP. Invoking “intermittent” is hindsight.

    Go back to the prio date. State of the Art is Continuous wipers. OTP: prolong wiper blade life. Was there any hint in the published state of the art that, if that’s your problem, you should move to intermittent wiping? If not, Bingo. Patentable invention. And it was, wasn’t it?

  69. Patent Law Student: “But using hindsight to formulate the objective problem does not guarantee that the problem itself was not obvious.”

    For just one second assume that this wonderful problem is obvious. It might be revolting to you, but please try, I know you can do it. Ok, ready? Now go to the 3rd step of PSA. Surprise! The claims survives. Why? Well, because the problem was not obvious (even though we pretended it was) and therefore the would-could analysis of step three could not render the claim obvious.

  70. Max,

    My problem with the PSA is that the problem, while objective once set, is always a point of contention and usually outcome determitive. Additionally, it does not apply to the more liberal patenting regime of the US, namely the software end of the spectrum. We all must admit that defining the problem is subjective in nature, and almost alway up for debate, and I have seen EPO panels too often define the problem so that it points directly at the claimed solution.

    On another note, the Duffy arguments are very detailed and insightful, and should not be discounted merely because the summary above over-simplifies them (as a summary must). There is definitely some merit to them.

  71. “Imagine the PHOSITA with D1 on the prio date, with no knowledge of the claim or the invention but given by his boss the task of modifying D1 in such a way that modified D1 will achieve the identified ‘technical effect’.”

    Classic hindsight. Once the “technical effect” has been identified, many inventions are easy to recreate using the prior art. In many instances, identifying the desired “technical effect” is the hard part.

    Let’s take a look at the intermittent wiper patents invented by Robert Kearns back in the 1960s. Your D1 is a normal wiper that works at one speed. The desired “technical effect” is to have a wiper work at different speeds. Although I was not a PHOSITA in the 1960s, I can imagine acheiving that technical effect with the motor technology that was known at the time would have been rather simple.

    Under PSA, this is definitely obvious. However, IMHO, this invention was (and is) patentable.

    You state that the EPO has a procedure for handling “problem inventions,” what exactly is it? The PSA assumes the desired technical effect to be known, yet that doesn’t reflect the reality of a large number of inventions.

    BTW: PSA is very simple to understand and to implement, even to a novice like myself. However, its problem lies in its simplicity.

    I find that fairness and simplicity are typically on opposite ends of the continuum. For any attorney that has ever had to put together a partnership agreement, splitting expenses/revenues on a pro rata basis is very simple. However, it isn’t very fair to those attorneys that work more or generate more business than others. However, to development an agreement that is fairer, one has to sacrifice simplicity.

    The PSA test is simple, which is presumably why you like it. However, I don’t think it reflects the reality of how many inventions come to pass, and thus, I don’t think it is fair. Personally, I think the more inventions that are patentable, the more incentive inventors hve to file patent applications. This, in turn, results in more disclosure, which is a good thing, IMHO.

  72. I think PSA-denier’s view in consistent with mine. When reply to TSM arguments in the U.S., I often discussed non-limiting advantages that the claimed invention provided over the applied reference. Guess what? – you can rephrase that discussion of advantages provided by the claims/disadvantages of the prior art as problem/solution of the claimed invention relative to the prior art.

  73. Interesting to note Dudas’ comment that a previous proposal for deferred examination, seen as a good way to reduce backlog by allowing unloved patent applications to wither and die, was opposed by various parties, including the Patent Bar. Anyone know why that was? Maybe because they saw a loss of revenue if any significant proportion of apps were going to be abandoned that way?

    If every filed application requires a FAOM, and the number of apps has increased the way it has, then FAOM quality is bound to suffer. A poorly reasoned FAOM rejection gives the applicant little reason to abandon. Deferred examination, with a significant examination fee element, encourages applicants to take a pragmatic view of the on-going value of their applications.

    Of course, lower filing fees (because of deferred examination fee element) might just encourage even more apps to be filed…

  74. Denier, sorry that I missed something there. You write that the TBA’s have recognised a “PSA failing”. News to me. Can you help me? Was that the one isolated Paterson Decision 20 years ago? Does it really stand up to analysis today? We’re not wishful thinking now, are we?

    Or are you merely noting the routine TBA task of admonishing the OD or ED for an “Examiner’s failing” (not a PSA failing), by selecting a starting point that would not have been realistic on the prio date, given the inventor’s own definition, before the filing date, of his technical field and his contribution to it?

  75. Denier, I don’t follow. Did you not say above that PSA is unfair to Applicants? Are you now saying it’s unfair to Opponents, who can’t get obvious subject matter revoked? You say that the “problem” with the PSA tool is that EPO artisans don’t use the tool properly. I wholehertedly agree that ivory tower dwellers inside the EPO can screw up even simple obviousness issues. All of us representatives before the EPO have a mission to communicate, educate and advocate, effectively. But let’s suppose we have brought all players to the point of using PSA correctly, including to handle “problem inventions”. You write that there are occasions when PSA is “inappropriate”. When would that be then?

  76. With regards to the Dudas letter, take a look at page 23.

    “The USPTO’s experience of proposing deferred examination in 2002 is instructive. The [AQS] is an even better way to ensure that examination resources are not wasted but are focused on inventions.”

    This paragraph says it all.

  77. Max, Max, Max

    “Either the published art tells him to try X, or it doesn’t. If it doesn’t, then X ain’t obvious to the PHOSITA.”

    Can you say “TSM”?

    Like TSM, PSA can provide a convincing rationale for denying inventive step. But the opposite isn’t true: passing TSM doesn’t mean that a claim is NOT obvious (which, I think, is what KSR was really all about). The big problem with PSA is that EPO examiners try to use it even when it plainly inappropriate – usually when the “closest prior art” is not actually a suitable starting point for formulating an “objective problem” without “inappropriate hindsight” – a PSA failing recognised by the EPO Boards of Appeal.

  78. Well, JYT, I concede that my “gobbledygook” was a bit intemperate, but I was narked. In future I will try harder to control my emotions and refrain from any more snarkinesses. As to snarky pds, his snarkiness extracted from me a tutorial on PSA, so it did achieve something positive. Hope that tutorial was useful. Hope it elicits replies. I see we already have links to the EPO Guidelines and Caselaw Digest. Thanks PSA-denier.

  79. PSA-denier, I agree it’s “artificial” but is it unfair to one side or the other? That’s quite an important question. If it is, we must scrap PSA. But if it isn’t……

    Inq. Mind: EPO Guidelines online? I would think so. But I’ve never tried to find it. Other readers can perhaps oblige. The main problem with PSA education is that it’s bike-riders chatting to bike riders (see the Guidelines for instance). Difficult for a bike-rider to imagine what not-yet-bike- riders find so dificult about PSA.

    Anon: you find difficulty with the idea that unpublished stuff can make something obvious. So do I. At least in Europe, with our Statute written on a white sheet in the 1970′s, we could define novelty and obviousness logically. We need obviousness to stop people patenting things that were already old or obvious at the filing date. The only reason we need a novelty provision is to regulate the (increasingly frequent) situation when rival inventors file on different dates, but all without having published anything. Novelty confines the later filers to that part of their filing that is novel over what the others filed earlier. They’re all non-obvious over the published prior art, but we can’t have them all getting 20 year monopolies now, can we?

  80. Hi MaxDrei

    “Increasingly snarky” is my perception.

    It is the snark that is a waste of time. The topics are generally great, and most of the discussion usually is too. That is why I like patently-o.

    But Telemachus’ post dripped with snark. Ditto pds. I find your exchange with patent law student leaning toward combativeness (mr. gobbledegook), vs. seeking clarity.

    To me boards like this should be about clear thinking — if Dennis or a poster is expressing a thought unclearly (or is doing a good job of expressing unclear thinking) then the thinking needs to get clarified. The snarkiness doesn’t make things go quicker and generally blows smoke instead of casting light. I find that to be unproductive, dragging out discussions that could have been wrapped up quicker — and most importantly, could have been left more clear.

    Maybe the put-downs make the poster feel good, so they are productive for him or her. But for me they are a BWOT.

    Thanks for asking.

  81. Thanks PDS, I’m no teacher and others do it better, but you’re right, I have to try. PSA’s value is in framing the debate about obviousness and in reducing it to a debate about a gap between just two points that were fixed, even before the app was filed. Debate about this defined gap is utterly focussed and shuts out all the background “noise” that otherwise bedevils obviousness debate. The steps are:

    1. Read what the inventor wrote in his app. Identify from the app the technical field and the contribution the inventor subjectively thinks he’s made to it. That “contribution” can be presented (for the artificial purposes of the about to commence PSA debate)as the solution to a technical “problem”(even if in actual fact the act of “invention” was in reality more like a “discovery”).

    2. Do a prior art search (hindsight here, of course).

    3. Imagine the PHOSITA on the date of the claim being tasked with achieving the “technical effect” that the claimed subject matter achieves. From what “realistic starting point” might that PHOSITA reasonably begin? There’s your first fixed point. If you can’t find one, you may be looking at Student’s “Problem Invention”.

    4. Now address the claim. Break it down into “technical features”. How many of those are within the disclosure of the starting point source (which we call D1).

    5. If all features are in D1, D1 takes away novelty.

    6. But they aren’t. We have one or more tech features (X) that “characterize” the claim relative to D1. They establish novelty, and the jumping off point for the next step.

    7. When you add magic ingredient X to D1, what technical effect does that yield? It might only be a mere alternative to the D1 embodiment but, more likely, it yields a performance difference.

    8. Express that performance difference as a “technical effect”.

    9. You can express that technical effect as an “objective problem”.

    10. Revert to D1. Imagine the PHOSITA with D1 on the prio date, with no knowledge of the claim or the invention but given by his boss the task of modifying D1 in such a way that modified D1 will achieve the identified “technical effect”.

    11. Imagine perplexed PHOSITA on the prio date, ignorant of the claimed subject matter, at a loss what to do, so scouring the art for a hint, or a suggestion from that published art what mods to D1 might help him to achieve that effect. Remember, the PHOSITA at that date doesn’t know that X will solve his problem because he lacks the power of hindsight. Either the published art tells him to try X, or it doesn’t. If it doesn’t, then X ain’t obvious to the PHOSITA.

    Whatever you might think about the artificiality of the aforementioned PSA treatment, it does have four merits, namely:

    i) it’s all over in a twinkling. Either you’ve obvious, or you’re not;

    ii) try as you will, you will find nothing to justify the assertion that PSA favours Applicant over Opponent, or Opponent over Applicant. It’s fair to both.

    iii) it “fits” with what real PHOSITA’s do, in real research labs, so commands their respect; and

    iv) even judges can relate to that.

    That’s why I’m a fan. Next.

  82. MaxDrei wrote: “Student: I commend to you the section in the EPO’s MPEP on the subject of “problem Inventions”.”

    Max, is the EPO’s MPEP available online? Or where might a US practitioner be able to get hold of it? I would really like to learn more about PSA.

  83. MaxDrei: So you acknowledge that there are “problem inventions”, or that problem-identification can at least be “part” of the invnetion. What’s the EPO test for that? Is there a PSA test for determining whether the problem itself is part of the invention? This all seems circular to me. At the end of the day, you are going to have to ask a PHOSITA whether or not the problem is obvious which brings you back to the U.S.: use common sense – not some rigid arcane tests, that work only half of time.

    Of course, PSA by defintion, only applies to “inventions” and is entirely out of touch when it comes to “discoveries”.

    teacup: I guess you really don’t know a lot about PSA. “objective” simply denotes that it is objective as to bystanders – i.e. not the problem the inventor subjectively suggests. However, the way the objective person identifies the problem is by looking at the claimed invention and using hindsight to understand the problem the inventor intended to solve. But using hindsight to formulate the objective problem does not guarantee that the problem itself was not obvious.

  84. Max

    Well, here’s one EPA who doesn’t think PSA is sooo fantastic, much less the solution to the obviousness problem.

    Hindsight is implicit in the PSA. The closest prior art is determined after the event *in light of the subject matter of the claim*. The technical problem is defined *by reference to the technical results achieved by the claimed invention* in comparison with the closest prior art. Obviousness is then judged by examining whether or not a skilled person, having regard to the state of the art, would have suggested the claimed technical features *in order to obtain the results achieved by the claimed invention*.

    Take the claim out of the equation. Give the skilled person the closest prior art. Ask how she would get from there to the claimed subject matter. First of all she would have to identify something that was wrong/could be improved with the prior art. Under PSA that’s a “given”, based, with hindsight, on the result achieved by the claimed subject matter.

    And ultimately, you’re still left with the same thorny problem: given this, this and this, would it be “obvious” to do that?

    The PSA can be useful sometimes, but all too often it creates a synthetic scenario that bears little resemblance to practical reality and that is inherently biased against applicants by assuming that the motivation for the invention itself belongs to the prior art.

  85. Another thing I like about the EPO is that they use references that were actually published before the filing date of your reference in an Inventive Step rejection. This is unlike the US where an examiner may combine a bunch of references for an obviousness rejection that had filing dates before your application (102(e)), but where not published when you filed your application.

  86. “But you never ask whether the objective problem itself would have been obvious to the person skilled in the art.”

    That’s kind of the point of the objective part of objective problem.

    If you are willing to be objective and if the problem is not obvious, the claim will survive PSA.

  87. With my comments I spoke about with PSA, what I was trying to address that if you assert your patent, I believe that a court would require that your invention solve the problem that you address in your application and/or in your office action response (if you apply a PSA analysis).

    Regardless, even if I am wrong about how I understand how PSA operates, I still think it is a very good way of addressing prior art (much better than any other approach that is used including TSM).

  88. Student: I commend to you the section in the EPO’s MPEP on the subject of “problem Inventions”. Those are the ones you are keen on, where the solution is obvious, once you have perceived the problem. All perfectly compatible with PSA, well patentable in Europe and a routine part of the EPO landscape.

    JYTDOG: “increasingly” snarky?? Not that I’ve noticed. Mooney detractors are becoming more polite. JAOI is not so aggressive these days. Anyway, who’s “snarky” here? Is the PSA thread a waste of time? YES, I guess. At least to all readers with no interest in streamlining obviousness.

  89. “The PSA assumes that inventions are somehow born into this world through divine relevations to those who are worthy.”

    What? Does not the concept of “inventive step” suggest the exact opposite?

  90. Max:

    Instead of railing on Patent Law Student, why don’t you take the time to give us all a little primer on PSA and how it differs from obviousness analysis in the US.

    Come on … you’ve been touting the benefits of PSA not only on this message board but on many other message boards for quite some time. If you want us to believe that PSA is something we should realistically consider, stop jumping up and down waving your arms while screaming “PSA is great!!! PSA is great!!! The US system sucks!!!!” and give us something useful to work with.

    Frankly, your incessant cheerleading is annoying. Try to introduce some analysis into your propoganda.

  91. I like this blog, but comments are becoming increasingly full off snarky put-downs. Big waste of time.

  92. Yes, a learned Justice of the SCOTUS used gobbledygook in relation to TSM. Indeed, it is as much tempting to use that term in relation to PSA.

    Under the EPO PSA, you first look for the “objective technical problem” the claimed invention intends to solve. That is you look at the invention, and try to formulate an objective problem, which the invention can be said to have solved. After formulating the problem, you THEN ask whether the claimed invention would have been obvious to an ordinary person skilled in the art, when faced with the formulated objective problem. But you never ask whether the objective problem itself would have been obvious to the person skilled in the art. Why not? Because you assume that problems are obvious. You therefore allow yourself to liberally engage in the hindsight resurrection of the problem based on looking at the claimed invention.

    I think the rest of my earlier post does not require further explanation.

  93. Student may I ask, where do you get “The PSA assumes X” from? Another learned commentator used the word gobbledygook recently. I’m tempted myself. I simply don’t understand where you are coming from. You tell me and then we can have a worthwhile debate.

  94. MaxDrei-

    The problem with the EPO PSA approach is that it assumes that “problems” are generally obvious. This is entirely not so. The fact of the matter is that most inventions begin when the inventor first realizes the problem. Once you fully understand the problem/objective, the solutions can be quite easy.

    Inventions by definition involves problem-identification. The process usually goes as follows: identify problem -> suggest first solution -> identify problem with first solution -> suggest second solution -> identify problem with second solution ->->-> suggest Nth solution, wherein N is the final workable solution after N suggestions.

    The PSA assumes that inventions are somehow born into this world through divine relevations to those who are worthy.

    There is nothing supernatural about inventing. Rather, there is a “natural” train of thoughts that brings about an invention. Problem-identification is equally important in that thought process.

  95. Teacup thanks. See: another misunderstanding. The Inventor’s subjective problem sets the PSA “realistic starting point” reference. Inventor gets full faith and credit, but only to the extent of what he said was his technical field, and his contribution to it, on his filing date. Next one please.

  96. Thank you, those last two contributors. In particular, the Anon contribution proves the Teacup observation, that many who think they understand PSA don’t. Learning PSA is like learning to ride a bike, when one was a child: fiendishly difficult to grasp but, once you have cracked it, impossible to unlearn. In one sense Anon you are right. With PSA, be careful what you write, in your app. because you will be held to it. File history is irrelevant, no point in looking at it. I suspect a great many people (academics, judges, litigators) have a vested interest in ensuring that obviousness stays un-demystified. Anon: the key is the OBJECTIVE technical problem. Over that, you have no control because it is the objective difference between 1) what you wrote as your app, BEFORE you filed it at the PTO and 2) the “starting point” prior art reference (published before your filing date) that is being applied to your claim (which starting point MUST be “realistic” in relation to the technical field and the subjective problem that the inventor announced in his app. See how PSA in this way inherently excludes all hindsight? Now, when a closer prior art starting point belatedly emerges, say in opposition proceedings, the objective problem inevitably changes, and there’s nothing you or the file wrapper or the prosecution history or your attorney can do to stop it changing (because it is still the difference between two pre-filing events). You can tweak the claim though, to shift the difference between the claimed subject matter and the starting point, and so re-establish non-obviousness on a narrower conception of what the “invention” is. I commend to readers the book by PAUL COLE (I’m not Mr Cole, just one who would wish his great little book more widely read). But, come on readers, anybody out there who understands PSA and still has a bad word to say about it. I can’t find anybody in Europe. How about the USA?

  97. Yes, file wrapper estoppal certainly complicates things. However, I think US courts would accept that the PSA is basically an objective and hypothetical question that usually has nothing to do with the problem(s) that the inventor initially wanted to solve.

  98. Interesting – one of Dudas’ recommendations for reducing backlog is allowing applicants to claim priority to a provisional after five years, not just one year as is currently the case.

    DC’s recent post suggested 20% of applications claim priority to a provisional. Given that number, I can see how Dudas’ suggestion might reduce backlog. It does assume that some utility applications are filed solely to maintain the earlier priority date though, and while I think that assumption is plausible, I don’t know how many applications it applies to.

    One problem I see is that it revives the possibility of submarine patents, particularly if provisionals remain unpublished. This is a big no-no if you ask me.

    Dudas mentioned obsolescence. Maybe the pros/cons could be balanced by a shorter period, say 3 years instead of 5. How long is a business cycle anyways?

    Any other thoughts on this one?

  99. Dudas says production increased 5% for those on the flat goal pilot, but fails to disclose that the border for fully successful was raised 5% on flat goal (95% of an examiners goal to 100%)! Flat goal is a terrible program which robs you of any extra leave you save. I can only imagine how the rest of the data was manipulated to further his agenda.

  100. I agree that the EPO PSA is a great way to analyze art, etc., but the problem with PSA in the US is that you have to solve the problem that you address in your arguments. This is something that I believe the case law of the CAFC supports.

    This is the same type of problem as putting an “object of the invention” part in your application, where although the problem is not part of the claims, your application of the claim will have to achieve the object or solve the problem that you address in your application/prosecution.

    Additionally, in the application of PSA in Europe, I don’t think that file wrapper estoppel is an issue that comes up as much as in the US. Hence, I can change my PSA analysis is Europe (especially if I have to narrow my claims). In the US, I would think that we would have to be held to two different technical effects if we changed our PSA analysis to address a different problem/solution.

  101. I would wager that very few non-EP types understand PSA. Sad, but true. PSA is brilliant, one of the few strokes of genius in patent law. And it’s so simple once you understand it. There is simply no better obviousness test, and no amount of half-baked essays will change that.

  102. A quick scroll through the “obviousness” papers and I see not one mention of the EPO Problem and Solution Approach, that cuts through obviousness like a knife through warm butter, yet still no academic or judge in Europe can demolish. Is this the “elephant in the room”, do we have here a “Not Invented Here Sysndrome”, does nobody in the US academic world understand EPO-PSA, am I blind, or what?

  103. Dudas is lying through his teeth. He says that of the people exit polled most were from art units with low production meaning production was not a factor. However, what he fails to point out is that production is low in those art units because the technology is more difficult and takes much longer to search, in short the cases are much harder hence more time is given. The reason those people leave is because they are tired of the production wheel. A 40% attrition rate is unacceptable no matter what group is being discussed because when those people leave their cases must be absorbed by the remaining examiners meaning that those examiners are no longer working on new cases.

  104. I thought that the retention graph in Dudas’s answer was particularly interesting. In retrospect, it’s not a real surprise that there is about 40% turnover in the first three years. I would imagine that that is true for most entry level positions. It’s also not too surprising that “nature of the work” is the primary reason why persons leave. It might be very fruitful, however, to dig deeper into the “nature of the work” issue to see where even incremental improvements can be made.

  105. “the timing of an invention helps determine its obviousness”

    Hmmmms, this may require some thought.

    I may be wrong, but the the above statement may just be as profound as some or all of the following statements:

    “the degree to which the prior art teaches the features of the invention helps determine its obviousness.”

    “the degree to which it rains helps determine how wet it is going to be.”

    “The degree to which the flame is applied to your buttocks helps to determine how hot it will become.”

  106. All’s well in the USPTO :)

    Ha, I do have to give Kudos for getting the attrition rate down by not firing anyone, practically whatsoever, during the last 6 mo or so. Literally, I don’t believe even one person that I know of was fired during this period where small droves were before that time. And yes, there was supposedly an actual “decree from on high” that this was to take place.

    Anyone else find it kind of odd that 8.9% have less than 95%? Or is that standard?

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