2018年5月30日 星期三

歐洲專利進步性筆記 - 組合、並置還是單純拼湊

歐洲進步性(inventive step)規定:

Article 56 Inventive step
An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art. If the state of the art also includes documents within the meaning of Article 54, paragraph 3, these documents shall not be considered in deciding whether there has been an inventive step.

Article 54 Novelty
(3) Additionally, the content of European patent applications as filed, the dates of filing of which are prior to the date referred to in paragraph 2 and which were published on or after that date, shall be considered as comprised in the state of the art.

曾接獲歐洲專利局檢索報告,其中提到最接近申請案發明的前案D1,認為D1對比了發明的主要元件,但也承認D1並未揭露其中幾個元件,不過認為這幾個元件特徵並未對整體發明產生技術效果,可以說僅是「並置(juxtaposition)」在專利範圍中,卻沒有與其他元件互動產生「協同效應」(synergistic effect),因此認為,即便D1沒有揭露特定元件,仍認為整體專利範圍不具進步性。


可以理解的是,一個發明是多個特徵的組合(combination of features),當歐洲審查委員考量發明進步性時,不能對個別元件提出進步性評估,應以「整體」考量是否發明為顯而易知(obvious)的技術,但是,如果發明為「多個特徵的單純拼湊或是並置(aggregation or juxtaposition of features)」,不能稱為所述的「組合combination)」,這樣的話,審查委員可以評估個別元件的進步性


以下EPC Guidelines G-V11, 7提出,就看這些元件特徵是否有「功能上的互動(functional interaction)」而能得到經過組合後的發明特徵。這個組合的技術效果應該要超過僅是元件的單純拼湊,而元件的互動應該要有協同效應(synergistic effect)。





[EPC Guidelines G-VII, 7, 5.2]

Combination vs. juxtaposition or aggregation 
The invention claimed must normally be considered as a whole. When a claim consists of a "combination of features", it is not correct to argue that the separate features of the combination taken by themselves are known or obvious and that "therefore" the whole subject-matter claimed is obvious. However, where the claim is merely an "aggregation or juxtaposition of features" and not a true combination, it is enough to show that the individual features are obvious to prove that the aggregation of features does not involve an inventive step (see G‑VII, 5.2, last paragraph). A set of technical features is regarded as a combination of features if the functional interaction between the features achieves a combined technical effect which is different from, e.g. greater than, the sum of the technical effects of the individual features. In other words, the interactions of the individual features must produce a synergistic effect. If no such synergistic effect exists, there is no more than a mere aggregation of features (see T 389/86, and T 204/06).
For example, the technical effect of an individual transistor is essentially that of an electronic switch. However, transistors interconnected to form a microprocessor synergically interact to achieve technical effects, such as data processing, which are over and above the sum of their respective individual technical effects (see also G‑VII, Annex, 2).
According to T 9/81, patentability has been accepted for a preparation in the form of a "kit-of-parts" in which the individual active compounds, representing known therapeutic agents, are physically separated, provided that the use of those compounds, either simultaneously, separately or sequentially, produces a new and unexpected joint therapeutic effect which cannot be attained by the compounds independently of each other.
Formulation of the objective technical problem 
In the second stage, one establishes in an objective way the technical problem to be solved. To do this one studies the application (or the patent), the closest prior art and the difference (also called "the distinguishing feature(s)" of the claimed invention) in terms of features (either structural or functional) between the claimed invention and the closest prior art, identifies the technical effect resulting from the distinguishing features, and then formulates the technical problem.
Features which cannot be seen to make any contribution, either independently or in combination with other features, to the technical character of an invention cannot support the presence of an inventive step (see T 641/00). Such a situation can occur for instance if a feature only contributes to the solution of a non-technical problem, for instance a problem in a field excluded from patentability (see G‑II, 3and sub-sections). For the treatment of claims comprising technical and non-technical features, see G‑VII, 5.4.
In the context of the problem-and-solution approach, the technical problem means the aim and task of modifying or adapting the closest prior art to provide the technical effects that the invention provides over the closest prior art. The technical problem thus defined is often referred to as the "objective technical problem".
The objective technical problem derived in this way may not be what the applicant presented as "the problem" in his application. The latter may require reformulation, since the objective technical problem is based on objectively established facts, in particular appearing in the prior art revealed in the course of the proceedings, which may be different from the prior art of which the applicant was actually aware at the time the application was filed. In particular, the prior art cited in the search report may put the invention in an entirely different perspective from that apparent from reading the application only. Reformulation might lead to the objective technical problem being less ambitious than originally envisaged by the application. An example of such a case would be where the originally stated problem is the provision of a product, process or method demonstrating some improvement, but where there is no evidence that the claimed subject-matter is thereby improved over the closest prior art uncovered in the search; rather, there is only evidence with respect to more distantly related prior art (or possibly none at all). In this case, the problem has to be reformulated as the provision of an alternative product, process or method. The obviousness of the claimed solution to that reformulated problem must then be assessed in the light of the cited prior art (see T 87/08).
The extent to which such reformulation of the technical problem is possible has to be assessed on the merits of each particular case. As a matter of principle any effect provided by the invention may be used as a basis for the reformulation of the technical problem, as long as said effect is derivable from the application as filed (see T 386/89). It is also possible to rely on new effects submitted subsequently during the proceedings by the applicant, provided that the skilled person would recognise these effects as implied by or related to the technical problem initially suggested (see G‑VII, 11 and T 184/82).
It is noted that the objective technical problem must be so formulated as not to contain pointers to the technical solution, since including part of a technical solution offered by an invention in the statement of the problem must, when the state of the art is assessed in terms of that problem, necessarily result in an ex post facto view being taken of inventive activity (see T 229/85). Where the claim refers to an aim to be achieved in a non-technical field, however, this aim may legitimately appear in the formulation of the problem as part of the framework of the technical problem to be solved, in particular as a constraint that has to be met (see T 641/00, T 172/03and G‑VII, 5.4.1).
The expression "technical problem" should be interpreted broadly; it does not necessarily imply that the technical solution is an improvement to the prior art. Thus the problem could be simply to seek an alternative to a known device or process which provides the same or similar effects or is more cost-effective. 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. Criteria for deciding whether lack of reproducibility of the claimed invention should be treated under Art. 56 or 83 are explained in F‑III, 12.
Sometimes, the objective technical problem must be regarded as an aggregation of a plurality of "partial problems". This is the case where there is no technical effect achieved by all the distinguishing features taken in combination, but rather a plurality of partial problems is independently solved by different sets of distinguishing features (see G‑VII, 6 and T 389/86).