Author Archives: Thomas Carlsson

Cooperation

In my previous post about coordination, I wrote that pure coordination problems are ones where no teamwork is needed to solve the problem. Pure coordination problems are typically caused by disorderly personal objectives. These objectives have to be organized, either spontaneously or by authoritative command, to solve the problem. The solution of the problem may require that all participants agree to realign their personal objectives in an organized manner, but it does not require that they actively help each other to achieve their personal objectives.

Many other social problems do require cooperation in order to be solved. It might even be said that the reason why group objectives exist is that they cannot be achieved without cooperation. But only in special situations are group objectives a direct aggregate of personal objectives. One situation where this might be the case is if a bus carrying 20 passengers gets stuck in the snow, and all of them have the personal objective to get the bus moving again. The passengers can then and there spontaneously form a group with the shared group objective to get the bus unstuck by pushing it. Although a minimal amount of coordination may be required to ensure that all passengers push on the bus simultaneously, the passengers can in general contribute to the completion of the group task without knowing very much about what the others are doing. Each passenger can push the bus to the extent that her strength, grip and ground support allow, and the combined effort will either suffice to move the bus or not. This is a simple, pure cooperation problem which can be solved by teamwork and elementary group organization because the passengers can easily recognize the group objective.

But groups with more complex group objectives, especially ones where a multitude of different personal objectives are linked to the group objective, can typically not be formed by spontaneous recognition of a shared concern. Instead, an Instigator gathers a group around a group objective which the Instigator has conceived, either by offering others an opportunity to fulfill their personal objectives within the framework of that group objective, or by authoritative or charismatic persuasion. Once the new group has been formed, it starts a group tradition, and this tradition can later have a persuasive effect of its own if it becomes widely known.

For example, an entrepreneur (the Instigator) forms a new business venture with the objective of producing a product or service which he or she envisions will be in high demand. Other people who possess suitable experience or education for furthering this objective can then join the company and espouse its group objective. Their motive for joining is usually that it meets their personal objective of earning a living, and maybe also the personal objective of advancement within a group hierarchy. In the best of cases, appropriating the group objective can also meet their personal objective of spending their time on an interesting and worthwhile cause.

The Instigator may also be a politician who forms a new political movement with the objective of changing something in society, or just with the objective of gaining power. Other people who feel inspired or impressed by the speeches or writings of the Instigator can come to espouse the same group objective if they find it persuasive, possibly because the change that the Instigator advocates is aligned with some of their personal objectives, or just because they find this group objective more meaningful than the objectives proposed by other political movements, and they have a strong personal objective to be a member of a tightly-knit group.

If the business venture or political movement meets at least moderate success, then its tradition and public reputation can help in the recruitment of new members. The greater the success, the greater the group objective grows, and the greater the number of people who align their personal objectives with those of the group. Even after a little bit of growth, the Instigator has to construct an administrative system for meeting the most important personal objectives of group participants (for example by paying salaries, or by organizing political rallies).

This administrative system also has to coordinate the actions of the participants, because complex group objectives never form pure cooperation problems. In a pure cooperation problem, the primary motivation for spontaneous group formation is typically that all participants in the group understand that their shared group objective can be more easily attained through cooperation than through individual actions, and they also spontaneously know how they should cooperate to reach the group objective (getting the bus moving again).

In contrast, group objectives which require coordination + cooperation can only be met if the individuals distribute their tasks in a sensible manner and help each other toward the common group objective. Their chances of succeeding in their group objective are reduced to zero if they cannot divide the group task into a suitable number of complementary individual tasks.

This requires an administrative system, and very often also a hierarchical organization. A leading group or individual oversees and guides the work of the individual participants. Free-riding is a fundamental administrative problem in large cooperative groups. Some participants in the group may not contribute at all towards the completion of the group task if they can just collect a reward without any effort, and without any risk of being caught. In our pure cooperation problem, some of our bus passengers may also be inclined to free ride – they might just pretend to push the bus and hope that other people’s efforts will be enough to get it moving. However, in that case the personal objective is so clearly aligned with the group objective that even the free-rider will decide to make an effort if the others first fail without him. In a large cooperation setting, the free-rider may not have any motivation to make a contribution, even as the cooperative venture flounders.

The administrative system which organizes the work of a large group can utilize a great variety of tools to meet the group objective: incentives, systematic planning and organization, information collection, hierarchical commands. As the group ages, the traditions of the group might become more important than formal administration: new group members may adopt the habits and practices of this tradition in order to fit into the group. This adoption might occur more or less automatically, but it may also be the result of a formalized training program.

In any case, it is the goal of any administrative system to foster cooperation and coordination. But interesting differences often arise in their relation towards competition: some administrative systems are constructed to also foster competition between the members of the group, while others stifle it. Competition can in some cases promote the group objective, but harm it in other cases. This will be the topic of my next essay.

 

Coordination

When left to their own devices, individuals’ pursuit of their personal objectives may inadvertently hinder other individuals in the pursuit of their personal objectives, even if these objectives are not irreconcilable. In other words, individuals can unnecessarily get in each other’s way when they pursue their personal objectives. An important public objective is to organize the pursuit of personal objectives in such a way that such disorderliness is minimized. This associated public task may be labelled coordination.

The organization of traffic is a simple example. Each individual is pursuing her own personal objective as she undertakes the task of moving from place A to place B. Whatever those personal travel objectives may be, the objectives of various people simultaneously moving about in traffic do not usually conflict with each other. Everyone can reach their intended destination, and the fact that one person reaches her destination does not make it more difficult or easier for any other person to reach her destination. In other words, cooperation would not make the fulfillment of these personal objectives easier.

Every driver’s personal objectives can, however, be more easily fulfilled by coordination. Traffic flows much more smoothly when each individual’s pursuit of her personal travel objective is guided by a general and widely used system of regulations. Teamwork is not needed, and individuals do not have to compromise their personal objectives in order to reach them. Such social problems may be called pure coordination problems.

On a smaller scale, solving pure coordination problems does not require laws, but simply plans. If an office with 15 workers  requires the presence of at least five persons between 8 o’clock and 18 o’clock, it is sufficient to do day-by-day planning one or two days ahead to ensure that this condition is met. Rules and plans for solving pure coordination problems are typically not much disputed, because most people can easily recognize their utility and are indifferent to their detailed content as long as they serve their purpose.

Sometimes the (putative) coordination problem can even solve itself (i.e., it can be discovered that the problem does not exist) if task-related data can be collected from all participants. For example, if all workers share their work calendars with each other, it may be discovered that five persons will in fact be present at the required time on one or more days, and no planning is then needed for those days.

This could in principle work even in the larger context of traffic, where a central computer could inform you that you are today the only driver on the road, so no coordination problem exists and you can freely drive in any direction you want. But more realistically, data collection can serve as guidance which partly reduces the scale of large coordination problems, for example in the form of a computer which tells nearby incoming drivers to circle around a traffic jam when it detects that cars are accumulating somewhere.

If no authority provides a rule or plan for solving a coordination problem, some form of solution usually emerges spontaneously. Traffic in Egyptian metropolises is said to be unguided by formal rules – each participant simply learns to go with the flow by following the example set by other drivers. Key components of spontaneous coordination are the conventions which are passed around from driver to driver by daily first-hand interactions on the street.

Small-scale coordination problems, like the one at the office, are not solvable on a completely spontaneous basis if they require personal sacrifices from some of the workers. If some workers have to sacrifice heir own freedom of choice to achieve the task, then the problem is no longer a pure coordination problem – it also includes an element of compromise.

Coordination problems also occur in markets. Market trade can be coordinated completely spontaneously, by the actions of individuals who focus on their own interests, and by the social conventions that they institute. But isolated individuals can coordinate so far as their first-hand interactions and first hand knowledge allows them to establish trustworthy connections with other market participants. As in the previous examples, a higher authority, such as the state, can greatly increase market coordination by setting rules which, for example, forbid fraud and facilitate bankruptcy, and by collecting and disseminating trust-inducing information such as official registers where important information about each market participant is publicly disclosed. But market trade also automatically includes elements of teamwork  and compromise, so it is not a pure coordination problem and I will have more to say about it in my next essays.

Personal and public objectives

Most individuals have personal objectives which they plan to reach in different stages of their life. Many personal objectives are completely private. They may relate to activities which the individual pursues for his own amusement and enjoyment, such as hobbies or voluntary charity. Or they may relate to serving his own needs or the needs of family members who require care. The success or lack of success that a given person meets in such leisurely pursuits is not of much interest to anyone else, except perhaps his closest circle of friends and family who share their private life with that person. People outside of this intimate circle will be not be affected by the pursuit of private personal objectives.

Other personal objectives have a broader social context, and the outcome of such pursuits may affect other people. These personal objectives include, for example, social achievements such as passing tests, obtaining qualifications or winning victories. Social achievements usually involve an element of competition, because the purpose of a test or a qualification is typically to rank or group people. Those who pass the test gain permission to drive a car, while those who fail the test do not. Those who gain the qualification of medical doctor become legally entitled to practice medicine, while those who fail to gain the qualification do not.

Other socially conditioned personal objectives involve a more indirect competitive element. These include the pursuit of wealth and other resources, such as social influence and power. One person’s pursuit of valuable resources does not always hinder others from pursuing the same resource, but if the resource in question is valuable due to its scarcity, then the pursuit will have an exclusive character.

Although the pursuit of personal objectives with social and competitive elements sometimes involves ramifications for those who participate in the same competitive setting, the group of people affected by the pursuit is usually very small, and ramifications for outsiders or non-participants are usually negligible. It does not matter to me which pupils gain the qualification to practice medicine and which do not, or which people gain wealth and power and which do not, except in matters where that power touches areas where my personal interests are at stake.

Group objectives

If an individual shares some personal objectives with other individuals, they can together form groups where these shared personal objectives are adapted as group objectives. The members of the group may agree upon group tasks which they should jointly accomplish to bring them closer to the group objective. Small groups can form spontaneously, without any authorities who coordinate group activities and actively inform prospective members about what is to be done. The group objective is usually quite simple in spontaneous groups. Groups can for example form spontaneously to push a bus up a hill so the journey can be continued, or to work for their mutual protection in a state of emergency.

Groups which aim to achieve more complex group objectives require agents who actively organize the group. Many such groups have a history and a tradition, and new group members may voluntarily want to become a part of that tradition. One reason for wanting to join a successful group tradition may be the personal pursuit of wealth or other resources. Business corporations are traditional groups where people work together to reach common group objectives. Corporate success may lead to individual rewards.

Sometimes group formation may occur through authoritative persuasion. The authority which persuades other people to join needs to have some degree of legitimacy to be persuasive. That legitimacy may stem from superior knowledge, experience, a selection process, or just personal charisma. When an individual is persuaded by an authority figure to espouse a group objective, that group objective may not initially be aligned with a specific personal objective which the individual harbours. But the individual may eventually identify with the group objective so strongly that it diffuses into his personal objectives as well.

The pursuit of group objectives typically much wider social ramifications for outsiders than the pursuit of personal objectives because a group objective can have a much larger scope and more momentum. Groups may compete with each other for wealth, influence and power just like individuals, and a much broader circle of people will typically be affected by group competition than by personal competition.

Each individual knows her own personal objectives intimately, as well as her own interpretation of group objectives which she espouses. She may be less certain about how other members of the group interpret its objectives, or how strongly various factions within the group disagree about the group objective. Even so, in case the prevailing group objectives gradually change to something which the individual cannot espouse, she can usually be reasonably certain that she would notice this change just by participating in the group. People receive information about group objectives from the leaders of the group, and can usually check the veracity of this information by direct observation or participation. People can understand both group objectives and personal objectives, and based on that understanding they can freely decide whether to espouse them or not.

Public objectives

But there are some objectives which are attributed to every individual even if everyone may not understand them or know anything about them. These objectives may be called public objectives. A typical example of a public objective is the provision of public services, such as security, streets, and schools, funded from a common tax pool. Most public objectives fall into two categories: (1) the provision of public services which no individual or group would have an incentive to provide on their own and (2) the prevention of deleterious consequences that follow from the pursuit of some personal and group objectives.

Public objectives are not spontaneously adopted by one individual, and then another, and then another, like a group objective with increasing popularity might be. Individuals can rarely discover public objectives through their own personal objectives, nor can they find self-regarding reasons for espousing a public objective. Instead, they only come to understand and espouse public objectives through theoretical reflection or instruction on societal affairs. The perspective in a public objective is, if not altruistic, at least egalitarian. The objective is to achieve something which is good for everyone, and an individual must think philosophically to be able to adopt this perspective.

However, the philosophical nature of public objectives does not necessarily mean that it would be very complicated or difficult to understand public objectives. It doesn’t take much reflection to reach the conclusion that better security will be provided by a public organization for everyone than by competing organizations for selected individuals, or by each individual for himself. But it does require a fundamental shift to an egalitarian perspective where everyone’s interests are taken into account equally.

Egalitarian thinking does not come naturally to most people, so public objectives would be of little importance if they weren’t mandated by law. They are brought into being in laws enacted by a state. The tasks required for pursuing a public objective are undertaken by state functionaries, not by private individuals or groups. The benefits gained by individuals and groups from the successful pursuit of public objectives can easily be taken for granted until they are lost, because they don’t require the active involvement of all members of society.

 

Problems behind sufficient disclosure

The scope of the exclusive right pertaining to a patent is delimited by the (granted) patent claim(s). The exclusive right extends to all technical devices which possess the features specified in the claim. It is irrelevant what other features the devices or methods may or may not possess. The owner of a granted patent has the right to bar others from using devices with the claimed features, but no right to bar anyone from using devices with some, but not all, of the claimed features.

Patent claims have a problematic dual role in the advancement of the public and private benefits of patenting. The applicant’s private benefit requires that the claimed scope be as broad as possible. Breadth is determined partly by the generality of the terminology in the claim (e.g. “a vehicle” is a more general term than “a car”) and partly by the number of claimed features. Each added feature F shrinks the scope because it excludes all devices which do not possess F. The applicant would therefore preferably claim a patent by specifying as few features as possible using the most general terminology possible.

However, the public benefits of the patent system require that the scope of each granted patent should not be too broad.  Scopes are limited by granting patents only to patent claims which meet the criterion of inventive step. A typical patent application proceeds from an initial version with very broad claims to a restricted version where the definitions given in the claims have either been increased in number or amended with a more detailed terminology based on the cited objections.

The public benefits of the patent system also require that the scope of each granted patent should be clear and that every patent application should be informative. Clarity reduces legal disputes and costs. Clear and informative patent publications are potentially useful source material for further technological development, whereas unclear publications are not.

It is evident from my previous post that the inventive step criterion can be quite complicated when it is explored in detail. Clarity is often considered a simpler concept than inventive step because the difference between a clear and an unclear technical feature is not assumed to be problematic. Another reason why lack of clarity is not always judged very strictly is that it raises the bar for inventive step, at least in principle. If some of the claimed features are ambiguous or unclear, patent examiners are advised to consider them as broadly as possible. In the absence of better objections, a distant objection D to inventive step can therefore sometimes be raised when a claimed feature F is so unclear or ambiguous that it can be interpreted to correspond with the device disclosed in D. This is sometimes possible even though D on the whole may be quite different from the claimed device and could not have been considered an objection had feature F been clear.

However, even though lack of clarity in a patent claim slightly increases the likelihood of rejection due to lack of inventive step, this is not a sufficient discouragement against deliberate obfuscation. After all, lack of clarity isn’t just a result of an inappropriately general terminology in feature F. The examiner usually has to be both imaginative and lucky to discover distant objections D which happen to correspond to the claimed feature simply because the feature is ambiguous. Furthermore, if no other objections are available, the search for D may take an inordinate amount of time and the objection may be easily circumvented in the next round of the examination.

In view of the above, patent criteria which concern clarity and sufficient disclosure (which are very closely linked, so I will simply label them the “sufficiency criterion” below) are required to protect the public benefits of the patent system. However, unlike the inventive step criterion, a sufficiency criterion has not been formalized in European patent practice. Examiners, boards of appeal and courts only apply vague general guidelines concerning how sufficiency should be judged. In brief, these guidelines refer merely advise the examiner / board member / judge to consider whether or not the content of the claims would be clear to a person skilled in the art, and that’s it.

Objective technical problems revisited

I propose that the sufficiency criterion should be formalized in the same manner as the inventive step criterion. It can be done in a very similar way. In the following presentation I will draw on the problem-solution approach which I discussed in my previous post.

The important insight of the problem-solution approach as it applies to inventive step is that the claimed invention may actually solve a different prior art problem than the applicant assumed. In other words, the applicant’s view of the prior art may be, and often is, incomplete. The risk of granting patents to deliberately obfuscated claims would be greatly reduced if this same insight were to be applied also to the sufficiency criterion. Sufficiency should not depend on the applicant’s own view of the invention and its relation to prior disclosures, but on the true state of the prior art.

The reason why some applicants deliberately obfuscate their patent claims is that even a weak argument for inventive step can be made to appear if the subject matter is unclear across the broad. Ambiguous technical terms which are not elaborated in the description are useful for obfuscation because it is never certain how such terms are delimited, that is, which real-world component fall into under this term and which do not. The applicant may nevertheless argue that the meaning is certain. Patentability examinations and infringement proceedings then become an uncertain game of equivocation, where the meaning of the term can be shifted based on the required arguments.

Of course every examiner recognizes that there is a limit to the degree of ambiguity that a claimed term can have if the claim is to be granted. Obfuscating applicants try to push the proceedings as close to that limit as possible. Obfuscating applicants typically possess large numbers of obscure applications. Most of them may be rejected in patentability examination, but some of them will not. The ones that are granted can be very valuable to the applicant if a reasonable case for infringement can be built. Lack of clarity again facilitates infringement attacks.

The public benefits of the patent system are clearly harmed by deliberate obfuscation. The limit between clear and unclear terms, supported or unsupported features, cannot be marked with any consistency from case to case if the sufficiency criterion is internal. If the sufficiency criterion is internal, patent applicants can use the ambiguous vocabulary which surrounds an ambiguous technical term to describe a putative technical effect which solves a putative technical problem. It can be hard for an examiner to maintain that the claimed feature is too ambiguous if it is supported by a description which has the outwardly appearance of a proper technical problem and solution.

Clarity and sufficient disclosure must therefore be judged against some other yardstick than the application itself. Instead of having examiners assess whether or not the person skilled in the art would be able to carry out the invention as described by the applicant based on the information given in the description, the sufficiency criterion should be that a person skilled in the art is able to carry out the invention as it is manifested over the closest prior art, based on the description given by the applicant.

This means that applicants would no longer be allowed to support the scope of their claims merely through their subjective understanding of the invention. Let’s assume that a patent application A1 specifies a patent claim which includes features F1, F2, F3 and F4. F1 and F2 form the preamble of the claim, while F3 and F4 form the characterizing part. The first component of the sufficiency criterion should be that the applicant must identify in the description a prior art document upon which this division of features is based. In other words, the applicant must disclose a document D1 which discloses features F1 and F2. Citations requirements for prior art documents known to the applicant should be enforced much more rigorously than most patent offices do today.

Lets assume that no closer prior art document than D1 is discovered in the patentability search. The corresponding sufficiency analysis would also ask what the combined technical effect of features F3 and F4 is. In other words, what beneficial or different result, not achieved in D1, is obtained with features F3 and F4? The analysis continues by asking  what corresponding technical problem the person skilled in the art would have had to solve, starting from an apparatus which contained only features F1 and F2 (when reading the application text on its earliest priority date), to achieve the technical effect over D1.

This may seem like a minor technical problem. After all, the person skilled in the art is thought to be reading the application text itself, where the solution should be directly disclosed. However, the gist of the sufficiency analysis is that the technical effect must be conceived in its detailed form A, that is, as a detailed description of the changes which take place in the apparatus/method itself, and/or in the surroundings on which it operates, due to F3 and F4 (see the earlier essay). This differs from inventive step analysis, where only the general description of the technical effect may be included in the technical problem. The information given in the application must be so detailed that the skilled person can  in a straightforward manner see where the technical effect in its detailed form (a form which may not itself be disclosed in the application) originates.

Just like in inventive step analysis, the subjective technical problem presumably corresponds to the objective problem when no better prior art document than D1 is discovered. And just like in inventive step analysis, the sufficiency analysis will be more or less of the standard kind when this is the case. In other words, the analysis could be carried out just about equally well even without invoking formal problem-solution analysis.

However, the situation is markedly different if the applicant included both features F3 and F4 in the characterizing parts of the patent claim but, as it turns out, feature F4 was in fact known from another prior art document D2, which was unknown to the applicant. This means that only F3 contributes to the technical effect. The requirement of a sufficient disclosure now becomes that F3 and its consequences be described in such detail that the objective technical problem relating to this (detailed) technical effect over the prior art should be solvable for a skilled person from the application text A1.

The utility of this problem-solution approach to sufficiency, again in direct parallel to how the problem-solution analysis tests inventive step, comes from the fact that the number of claimed features not disclosed by the prior art determines how broad the objective technical problem will be. If, in the above example, none of features F2, F3 and F4 would be disclosed by the closest prior art document, then the corresponding technical effect would usually (even in its detailed form) be a lot more general than if just feature F3 distinguishes the claimed invention from the prior art.

It is, and should be, harder for the application to meet the sufficiency criterion if only F3 separates the claim from the prior art. The technical effect of just one feature is necessarily more particular than the technical effect of two or three features. In order for the description to provide sufficient support for a lone distinguishing feature F3, the technical content of this feature must be described in such detail, in the terminology must be shared with document D2 to such an extent, that the person skilled in the art would see where the technical effect comes from.

This does not mean that the applicant would have been required to foresee this technical effect when writing the application. On the contrary. Just as a new argument for inventive step can be introduced in problem solution analysis once the closest prior art has been reliably established, new arguments for sufficiency can also be introduced when the closest prior art is known. What is required from the description of a patent application is that every claimed technical feature must be described in such detail, and linked to such an established vocabulary, that the skilled person can recognize the technical consequences of the feature even in situations which may not have been described in the application.

What does all this have to do with obfuscation? A typical obfuscating patent application is self-contained in the sense that it seeks to link ambiguous technical terms and explanations to each other in a pseudo-consistent manner without linking them to any established scientific or technical vocabulary.

A certain degree of self-containment is to some degree unavoidable in most applications due to the generality of the protection sought with a patent claim. The description therefore has to be a kind of dictionary for all technical terms used in the claims because their meaning in a particular application may differ from their regular meaning. In other words, the dictionary of a patent claim does not necessary have to conform either with general-purpose dictionaries or with the lexicon of other patent applications in the same field.

However, insofar as new meanings are introduced for a technical term T, the description should be an unambiguous dictionary to that meaning. It should contain examples and links which establish a connection between the term T and established technical, scientific and regular vocabularies. This facilitates a clear yes-or-no categorization between objects that correspond to term T and objects which do not correspond to it.

The problem-solution method described in this essay puts the description to the test. Depending on how many of the claimed features are disclosed in the closest prior art document, the bar for sufficient disclosure is either raised, lowered or kept unchanged compared to the amount of detail that the applicant deemed sufficient when writing the application. The question is: has the applicant nevertheless presented enough details about the feature(s), and linked it so clearly to established vocabularies, that the person skilled in the art would recognize the technical effect?

 

 

 

 

 

Problems behind inventive step

The inventive step criterion is usually the center point of most contestable patentability examinations (there are of course many inventions which are incontestably not patentable, and some which are incontestably patentable). When the applicant writes an application, the true extent and content of previously published inventions in the same technological field is more or less unknown. The examination process is normally a comprehensive search for prior art documents which have hitherto been unknown to the applicant. Once the closest prior art documents have been found, the patent examiner gives an opinion on whether or not the claimed invention meets the requirement of inventive step in view of the prior art.

The public benefits of the patent system require that patent monopolies be restricted. In particular, patents should not be granted to claimed inventions whose differences with regard to the prior are nonexistent or technically insignificant. It makes no difference whether or not the applicant was actually aware of any particular prior art document when the application was filed. The applicant cannot, for example, argue that a Japanese prior art document which matches her invention claimed should be disregarded, because she does not understand Japanese. Her defense may be truthful, but she loses the patent due to the unfortunate coincidence that a Japanese person made the same invention before her. In order to prevent copycats from receiving patent monopolies, patents must be granted only to inventions which could not have be reached through minor modifications from any previously published document – no matter how unlikely it may be that the applicant would in reality have read and copied this precise document.

Although the inventive step criterion is clear in abstract form (“grant only those applications which exhibit a significant difference over the prior art”), it is difficult to apply in practice. It is difficult for a patent examiner to decide, on any quasi-objective scale, where the line between significant and insignificant differences should be drawn. For a long time, patent examiners based these decisions primarily on their personal judgment and past experience, comparing each new case to decisions they had made earlier. This method was not as arbitrary as it may sound. Experienced examiners could most probably apply their personal experience fairly to new applications when they set their mind to it. However, it was very hard to ensure that this informal way of applying the inventive step criterion remained constant, or even comparable, between different examiners. Another problem with personal judgment was that it usually involved fairly little explicit reasoning which could be put in writing. Decisions which were based purely on personal judgment tended to be opaque to an outside audience, including the applicant who received the decision.

In the past 25-30 years, especially at the European Patent Office, the influence of examiner’s personal judgments has been reduced, and been made more explicit, by consistently judging the inventive step criterion through a theoretical framework. With the help this framework examiners can split their decision process into logical parts and exercise critical reflection on each part. This so-called problem-solution framework is the only attempt to formulate a general theory of inventive step. The benefits of a more theoretical approach is that it promotes clear and legible argumentation and helps examiners avoid hindsight fallacies.

Problems and their solutions

The problem-solution approach can be studied best through the case law of the European Patent Office. Very briefly, it involves a comparison between one patent claim and one document (usually the document which has been deemed the closest prior art). The claim comprises a list of technical features. One by one, the examiner checks which features are directly disclosed in the document (either explicitly or implicitly). The examiner then focuses on the remaining features (the ones not disclosed in the document) and asks what their combined technical effect (over the prior art disclosed in the document) is. In other words, what technical  benefit, which is not achieved in the same in the closest prior art document, is achieved through these features. A clear benefit is not a necessary requirement under all circumstances, but it is easier to understand the problem-solution method in these terms.

If no beneficial technical effect can be discerned, the claim clearly lacks an inventive step over the prior art document and the decision is clear. But if there is a beneficial technical effect, the examiner then seeks to formulate the technical problem which a person skilled in the art would have had to solve, when reading the prior art document on the day when the application was filed, to achieve the benefit which the invention achieves.

Instead of asking whether or not it would have been obvious to a person skilled in the art that the undisclosed features produce the beneficial technical effect (a question which involves a hindsight fallacy), the examiner instead thinks about the general improvement which the person skilled in the art may have sought to make to the prior art document, and asks whether or not the person could have solved the problem pertaining to that improvement by adding the undisclosed features to the apparatus known from the document.

The applicant has usually presented some technical problem pertaining to the invention in the application. A basic consequence of problem-solution analysis is that this so-called subjective problem may not be relevant. The examiner may, for example, discover a closest prior art document where those features which the applicant presumed to be unknown in the prior art are in fact disclosed. Features which the applicant assumed to be known in the prior art, may on the other hand not be known from this document. This means that the so-called objective technical problem, which the examiner (or anyone else) formulates after a closest prior art document has been discovered, may differ significantly from the subjective problem which the applicant assumed to be most relevant for the invention.

The objective technical problem

Although the problem-solution approach provides a theoretical framework for assessing inventive step, the examiner (or any other person who might make use of it) is still left with a lot of discretion in applying it. There are no comprehensive guidelines concerning how the objective technical problem should be formulated. The guidelines published by the EPO state merely that the general form of the problem should be “how to modify or adapt the closest prior art to achieve the technical effect(s) which the invention provides over the closest prior art”.

An very important addition to this guideline is provided in section I.D.4.3.1 of the Case Law of the EPO Boards of Appeal: “the problem should be as specific as possible without containing elements or pointers to the solution”. In the following sections I will examine what this means.

Two important questions arise from the general for of the problem (cited above) and from the above guideline: (1) how should the closest prior art be conceived if the problem is to be as specific as possible without containing pointers to the solution, and (2) how should the technical effect(s) be conceived if the problem is to be as specific as possible without containing pointers to the solution?

The closest prior art

Question (1) may at first seem nonsensical. A prior art document is what it is, fixed and unchangeable. There may seem to be very little room for free interpretation when a person skilled in the art reads the closest prior art document in full and sets out to make improvements by solving problems pertaining to the document.

However, the definitions in a patent claim are usually made in general terms. This means that the apparatus or method described in the prior art document may in fact differ from the claimed apparatus or method, even though it possesses the claimed features.

For example, let’s imagine mirrors with two kinds of shapes: convex-shaped mirrors and convax-shaped mirrors (the latter concept is my own invention). Convex and convax shapes have some similarities, but also certain differences. Let’s also imagine that the terms “convex” and “convax” are well-established for conceptualizing their differences. In other words, most practitioners in this field of technology know what the difference between a convex shape and a convax shape is.

Furthermore, let’s assume that the additional term “convux” (also my own invention) has conventionally been used to conceptualize the similarities between convax and convex shapes. In other words, “convux-shaped” is used as a general term to cover both convex-shaped and convax-shaped mirrors, and possibly other shapes as well. This means that all convex mirrors are convux mirros and all convax mirrors are also convux mirrors.

Now, let’s imagine that inventive step is assessed on a patent claim which contains a feature F1 which defines a convux mirror, and that the closest prior art document discloses convax mirror. The patent claim we are imagining may be included in a patent application which discusses convex mirrors, or one which which discusses only convux mirrors – this makes no difference for the argument which follows.

Our imaginary patent claim specifies only the general term “convux”, but the prior art relates to a more specifically defined “convax” mirror. The prior art mirror certainly falls into the scope of the claim, even though the category “convax” does not exhaust the category “convux”.

In this case, conceiving the closest prior art “as specifically as possible” means that the convax mirror in the prior art document must be conceived as a convux mirror, not as a convax mirror.

Let’s imagine that the patent claim mentioned above also specifies features F2 and F3, and that F2 is disclosed in the prior art document, while F3 is not.

Feature F3 produces a technical effect which solves a general problem P, which is common to all convux mirrors. This problem may be more difficult than the corresponding subproblem P’ which pertains specifically to convax mirrors. For example, some properties of convax mirrors may make the problem P’ fairly small and easy to solve, while other properties of convex mirrors may make the corresponding subproblem P” for these types of mirrors much more difficult.

In this case “the closest prior art” must therefore specifically be conceived as a convux mirror, not a convax mirror. The scope of the problem P may not be the same as the scope of either subproblem P’ or P”. A correct formulation of the objective technical problem must take this into consideration.

To summarize, we might say that in the objective technical problem the prior art should be designated with the most specific term which fits both the claim and the prior art. In this case, that term is “convux”.

The technical effect

Question (2), how should the technical effect(s) be conceived if the objective technical problem is to be as specific as possible without containing pointers to the solution, is simpler. The technical effect of a claimed feature F (which is not disclosed in the closest prior art document) can generally be described in two different ways:

(A) a detailed description of the changes which take place in the apparatus/method itself, and/or in the surroundings on which it operates, due to F.

(B) a general description which specifies the property (in the apparatus/method, or in its surroundings) which is changed due to F.

A detailed description (A) may specify various parts of the apparatus and how they interact both with each other and with their surroundings. A general description (B) instead specifies a property such as quality, performance, efficiency, cost, durability, yield, storage requirements, versatility, user-friendliness, etc.

A clear way to state the technical effect of a claimed feature F is that this property changes because this happens in the method/apparatus or their surroundings. Or, in the shorthand notation introduced above: B because A.

With these distinctions in mind, the answer to question 2 is this: in the objective technical problem, the technical effect must always be conceived only as a general description B. Any attempt to include the detailed description A in the technical problem would be a pointer to the solution. The problems that a person skilled in the art may identify in the closest prior art document have to do with general properties which could be improved. After noticing a property which could be improved, the person skilled in the art may get down to the details. But the crucially important line between as specific as possible and no pointers to the solution lies precisely after the moment when a problem has been noticed on a general level.

In other words, a problem should be general and should not contain any details which pertain to its solution. Including in the objective technical problem any detailed descriptions (A) would lower the bar too much in the inventive step criterion, because a pointer to the solution would then be included in the problem itself. That is why the objective technical problem must always state the technical effect of a feature F as a general description (B).

Conclusions

This essay demonstrates that the objective technical problem, usually formulated as “how to modify or adapt the closest prior art to achieve the technical effect(s) which the invention provides over the closest prior art” must be formulated and interpreted very carefully if it is to be “as specific as possible without containing elements or pointers to the solution”.

The objective technical problem is the fulcrum around which the inventive step criterion revolves in European patent practice. Fair decisions on inventive require careful considerations of the objective technical problem by practitioners who apply the problem-solution approach.