The Skilled Person, Ordinary No Longer
This article was included in our Summer 2010 edition of Inside IP magazine.
In addition to substantial amendments resulting from the recent changes to the European Patent Convention, the latest version of the Guidelines for Examination in the European Patent Office (EPO), which came into effect on 1 April 2010, includes a number of other amendments based on some recent, and some not so recent, case law, most notably with regard to inventive step.
The characteristics and remit of the ‘skilled person’, the notional assessor of inventive step, have been revised. Not only has the skilled person been upgraded from “an ordinary practitioner in a field of technology” to a “skilled practitioner”, but he or she is also now said to be “involved in constant development in his technical field”, and, when assessing obviousness, “may be expected to look for suggestions in neighbouring and general technical fields or even in remote technical fields, if prompted to do so” . Although these amendments ostensibly add strings to the skilled person’s proverbial bow, they are based on relatively old case law and so, in actual fact, seem simply to bring the Guidelines into line with his or her previously recognised talents and practices.
The changes to the Guidelines also concern the formulation of the ’objective technical Problem’, which is the second step of the EPO’s three-step ‘problem-solution’ approach to assessing inventive step. The Guidelines now explicitly specify that the technical problem should be formulated based on the technical effect resulting from the distinguishing features of the invention with respect to the prior art, and not based on the features themselves. We do not think that this will result in any change in practice since EPO examiners acting properly had been determining the effects of the features, rather than the features themselves, when formulating the problem. The Guidelines also now state that “a technical problem may be regarded as being solved only if it is credible that substantially all claimed embodiments exhibit the technical effects upon which the invention is based”.
Thirdly, the Guidelines as amended offer that, when considering whether the skilled person would have combined elements from the prior art, “even an implicit prompting” or an “implicitly recognisable incentive” in the prior art is sufficient to render such a combination obvious. The amended text spells out that there is no need for an explicit incentive or pointer for combining documents when considering inventive step. As such, it seems to provide examiners at the EPO with enhanced freedom to combine documents when attacking claims on patentability grounds. It may also make it more difficult to convince examiners that cited combinations would not be obvious to the skilled person.
Overall, although there may not be much practical change in the way inventive step is assessed by the EPO, these latest changes to the Guidelines may encourage examiners to take a slightly tougher stance in relation to this, the most subjective of the criteria for patentability.