Rarely has this Kat come away from a conversation with his patent attorney friend Gwilym Roberts (Kilburn & Strode) without feeling that he is fortunate indeed to be an academic and a commentator, since Gwilym can be pretty well relied on to come up with something worth thinking about and then commenting on. In the piece below, Gwilym ruminates on -- among other things -- how difficult it is to achieve a shift in the test for inventive step in national law, in the UK at any rate, compared with the simple and subtle means by which change may be brought about in the massive territory of the European Patent Convention countries as a whole. He writes:
Boilerplate Law
As the latest crop of delighted, disappointed and semi-satisfied candidates receive their EQE exam results and a few more grizzled grandfathers grumble towards retirement, the pool of attorneys doing things "the EPO way" grows ever more dominant, and the continental rather than common law approach to law-making seems to gain sway.
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There are still some European
patent attorneys alive today
who pre-date the EQE |
The difference between a practitioner trained up through the EQE boot camp and the veterans who had to work it out for themselves can be glaring, as anyone who has faced both types in an opposition will know. The EPO-trained attorney will almost invariably adopt the fairly strict structure applied to paper C of the EQEs, rigorously going through the patent claim by claim, ruthlessly accurate with attacks on dependent claims and terminator-like when ensuring that all available grounds have been applied. Some (not all -- this commentary is not designed to stimulate a grandfather backlash) older practitioners on the other hand adopt a looser, more advocacy-based approach, applying patentability as rigorously as ever, but perhaps concentrating on the main fighting points and in a less structured manner. Both approaches have their merits, and on a level playing field one would hope that the most persuasive argumentation would be successful. But the pool of EPO Examiners is perhaps even more driven towards the EQE-based structured approach such that they recognise and appreciate the template and possibly struggle with the more free-form approach that they decreasingly often meet.
Another good example is the problem-solution approach ('PSA'). For many years patent attorneys -- especially some British ones -- argued about the legality of PSA altogether. It is not enshrined in the European Patent Convention, and EPO case law is not binding. The PSA is only found in the Guidelines (although it does, in a primitive form appear in the very first Guidelines). Nobody complains any more about whether the PSA has legal basis; the argument now is simply about how it should be applied, not whether it should be applied. And the approach has become far more structured, once again, through the EQEs. The test as set out currently in the Guidelines can be broken down into more or less five steps and current candidates are well versed in structuring their inventive step arguments to go through the steps one by one. Here there is perhaps more diversity between recently-qualified and longer-term qualified practitioners as problem-solution seems to have evolved to ever higher levels of rigour, but to see an inventive step argument put forward without use of PSA seems almost unthinkable now.
Whether accidentally or by design, through a structured and consistent approach to setting and marking the EQEs, the EPO has succeeded in effectively changing practice. Informally governing the structure of an opposition statement, or ensuring improved formulation of problem-solution argumentation would seem to be a positive and unchallengeable step; consistency is improved and quality enhanced accordingly.
But where we see an almost subliminal impact on substantive patent law, the situation is different. The PSA is a very good way of making the subjective question of inventiveness as objective as possible, but it has become, de facto, the only way simply because nobody questions it any more.
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| How the EPO rewrites its Guidelines ... |
Viewing the EPO at a administrative body there is no real problem with this; again, it permits consistency and hence quality. Whatever the UK courts may have said in the past, however, the EPO is more than this. It creates legal rights that have an enormous commercial impact in a market of hundreds of millions of people. In the comparatively small jurisdiction of the UK, to change the test for inventive step we would need a Supreme Court decision. In giant Europe it can be done with a minor rewrite of the Guidelines. Common law and continental law may differ in many ways but we need to temper the general success that the EPO has had in building a highly competent profession through EQE training, with a recognition that this should not extend to building new laws through the same route. And it shouldn't just be the old dogs who make that recognition.
Is Gwilym simply sounding off, or has he put his finger on a couple of important issues which, whether we seek to intervene or not, we should at least take the time and effort to appreciate? Do let the IPKat know.
