It is one thing to argue against an inventive step objection. It is quite another thing to construct the inventive step objection in the first place.
That was the premise behind this seminar, in which two experienced examiners from the UK IPO, Stuart Purdy and Andrew Hole, offered the opportunity for attorneys to see patent examination from an examiner’s perspective, in a friendly and accessible manner.
The seminar (which was held in May 2013) was divided into two portions. In the first, Stuart explained how UK examiners develop an understanding of inventive step through their training, and indeed how he personally continues to grapple with the concept. In the second portion, Andrew provided an insight into how inventive step objections are formed in practice.
In the first section, it was explained that examiner training commences with a four week initiation, in which new examiners are introduced to the various criteria against which they will spend their career assessing patent applications. Amongst these criteria is that of inventive step, which is covered relatively briefly at this stage. It was explained how new examiners are provided with workshops covering worked examples of inventive step issues arising from previous applications.
In particular, these initial training sessions are intended to give new examiners a feel for what inventive step is. Typically, examiners are taught that inventive step can be defined as a “non-obvious advance in the art”. By way of example, the analogy of cooking a risotto dish has been used with trainee examiners: the process of frying onions, garlic, etc. followed by adding the risotto rice together with water results in a tasty, if not exquisite dish. In order to achieve an end result to make a top chef proud, it is important to fry the rice for a minute prior to adding the water. This additional step in the recipe is not obvious, and cannot be deduced by the amateur chef simply by looking at other recipes, and therefore could be said to involve an inventive step. This analogy also helpfully introduces the concept of the skilled person; another element of the examiner’s training. The amateur chef, of course, corresponds to the skilled person, whereas the top chef can represent an inventor.
However, there is the caveat that there is a limit to how much can be learnt from simple analogies and examples of previous cases. By definition, no two inventions are the same, and therefore there is a limit to how widely lessons learned from a specific case may be applied generally. Stuart went on to say that his experience has shown him that there are no general rules that an examiner can apply, although there are guidelines as established in view of Windsurfing or, more recently, Pozzoli Spa v BDMO SA & Anor.
Learning how to apply these guidelines, and also how to use the specific lessons learned from selected cases, is something that takes time. After their initial training, examiners receive several subsequent training courses, alongside constant supervision under a senior examiner, until eventually becoming a senior examiner themselves after 8 to 10 years.
A particular issue with which examiners must grapple as they develop their understanding of inventive step is that of hindsight. Stuart was honest about the fact that it is very difficult not to use hindsight, and that when attorneys respond to an examination report stating that hindsight has been used, he often agrees. New examiners, it was explained, are particularly keen to object that inventions are obvious in view of the prior art. We were provided with a tip with regard to responses: although examiners are aware that they often inadvertently use hindsight, they do not appreciate responses simply asserting the fact and they are far more receptive to reasoned argument.
However, that said, an objection in relation to inventive step is only issued if the examiner is confident of it. The objections produced by junior examiners are moderated by a senior examiner, who will have a more developed understanding of the subtleties of obviousness, motivation, and the abilities of the skilled person. No examination report is sent out without approval from a senior examiner.
Andrew also explained that although examiners are very busy and therefore have limited time to spend on each application, they ensure that their focus is directed at the main claims, and that any objections are carefully considered. He mentioned that he frequently starts writing an objection in regard to inventive step, only to delete it if he decides that the objection does not completely hang together.
While every application should be assessed by an examiner who has at least some experience in the relevant technical field, this is not always possible. Because the IPO is currently overstretched, examination is often carried out on overtime. Therefore, the examiner may not have relevant experience. However, we were assured that if this is the case, the examiner would always consult with someone with relevant technical experience.
Finally, both Andrew and Stuart were keen to convey the message that they do not view themselves as in opposition to applicants and attorneys, but that they want to grant patents, albeit with a high presumption of validity. Therefore, they see the examination process as a negotiation, rather than a battle.
In all, this was a valuable and interesting insight into patent examination from the other side, presented in a warm and engaging manner.
Mark Callaghan 27 August 2013
[This article was first published in the CIPA Journal July 2013]
I think inventive step is still quite lenient at the UKIPO. I think the unstated philosophy is that any decent argument in reply will be accepted, and that suits Applicants and is in tune with the resources available to the IPO.