Problem-Solution Approach: ur doin it wrong

This particular Kat was busy digesting the Court of Appeal's decision in Actavis v Novartis when another part of the IPKat commented on it here.  Some comments have already started to arrive about what seems to be the most interesting part of the judgment, which involves Lord Justice Jacob having a lengthy stab at the EPO-style problem-solution approach (at paragraphs 25 to 50), and arguably getting it wrong.  The relevant bit of the judgment goes like this:

"Moreover the PSA does not really cope well with cases where the invention involves perceiving that there is a problem, or in appreciating that a known problem, perhaps "put up with" for years, can be solved. Take for instance the "Anywayup Cup" case, Haberman v Jackel International [1999] FSR 683. The invention was a baby's drinker cup fitted with a known kind of valve to prevent it leaking. Babies drinker cups had been known for years. Parents all over the world had put up with the fact that if they were dropped they leaked. No-one had thought to solve the problem. So when the patentee had the technically trivial idea of putting in a valve, there was an immediate success. The invention was held non-obvious, a conclusion with which most parents would agree. Yet fitting reasoning to uphold the patent into a PSA approach would not really work. For by identifying the problem as leakage and suggesting it can be solved, one is halfway to the answer – put in a valve. 

Another aspect of obviousness which is not readily answered by the PSA is illustrated by the 5¼ inch plate paradox. This runs like this. Suppose the patent claim is for a plate of diameter 5¼ inches. And suppose no-one can find a plate of that particular diameter in the prior art. Then (a) it is novel and (b) it is non-obvious for there is no particular reason to choose that diameter. The conclusion, that the plate is patentable, is so absurd that it cannot be so. 

What then is the answer to the paradox? It is this: the 5¼ inch limitation is purely arbitrary and non-technical. It solves no problem and advances the art not at all. It is not inventive. And although "inventive step" is defined as being one which is not obvious, one must always remember the purpose of that definition – to define what is inventive. That which is not inventive by any criteria is not made so by the definition. Trivial limitations, such as specifying the plate diameter, or painting a known machine blue for no technical reason are treated as obvious because they are not inventive. 

The PSA does not assist in providing an answer to the paradox. This is for the simple reason that there is no problem and so no solution to it."

The IPKat suspects that many people from the EPO, together with many European patent attorneys, will cringe on reading these paragraphs, since both types of difficulties would be well known and fit into the problem-solution approach without too much difficulty.  The first one fits because the problem could be seen to be, in context, how to make a plate according to a particular requirement (e.g. one to fit a table setting). The solution, which is to make the plate a bit bigger, is completely obvious.  The second one is slightly more interesting, because it involves recognising that the inventive step can lie at least partly in the recognition of the problem, following which the solution may be obvious.  In the case of the leaky cup, one way of looking at it could be that the problem may not even have been recognised as being a problem, but instead merely a fact of life, so the recognition of it being one with a potential solution could form part of the inventive step.  This is even given as one of the examples in the Guidelines (C-IV 11.6).  Of course, there may be other ways of looking at the same examples that also fit the problem-solution approach, but this Kat thinks that saying these types of inventions don't fit is not quite right.  It also probably doesn't help when the crucial step of identifying what the technical effect of the difference between the claimed invention and the closest prior art is somewhat skated over, if not missed out altogether.  If this is the way the English courts are going to look at the problem-solution approach, perhaps we would be better off as we are with Pozzoli and Windsurfing.