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| Said every alleged infringer everywhere... |
The identification of the technical problem is an important aspect of European patent practice. In this panel discussion on the final day of the AIPPI World Congress in Sydney, practitioners from Germany, the US, China and Japan explored the importance – or otherwise – of identifying the technical problem in their respective jurisdictions. James Ellsmore (KWM) reports on Tuesday's final panel session:
"The European Patent Office’s problem-solution approach to assessing obviousness renders the identification of the technical problem central. It is also a requirement of the European Patent Convention that an application for a patent state the technical problem the claimed invention solves (at least implicitly, if not in explicit terms). It was against this background that Dietmar Haug, Senior IP Counsel with KNH Patentanwälte, led a panel of practitioners in a discussion of the metes and bounds of the technical problem and its relevance to prosecution practice and infringement proceedings. Marina Cunningham, Managing Partner of McCormick Paulding & Huber, explained that the requirement to indicate the technical problem in a European application stood at odds with drafting practice in the US. In the US, Marina explained that current practice is to limit the description of the technical problem in the background section as much as possible. This is done for several reasons and stands in contrast to previous practice in the US, when applicants used the background section to define the technical problem addressed by the claimed invention. As Marina explained, framing the problem in this way and identifying the closest prior art did not always work to the applicant’s advantage during prosecution or litigation and has now been abandoned. Sitting on the continuum between Europe and the US, Yali Shao, a partner of Liu, Shen & Associatesexplained that like Europe, China had adopted the requirement that a Chinese application describe the technical problem. However, it is not a mandatory requirement: if there is no description in the specification, the examiner will not require the applicant to add a description into the specification. Yali canvassed a number or pros and cons for either stating or not stating explicitly the technical problem in the specification. Yali’s suggestion was that the Chinese application should state in a non-limiting way that more than one technical problem can be solved by the invention: “the invention solves at least one general problem and several specific problems”. The one exception to the foregoing rule, Yali said, was that for business related inventions in China, an applicant should explicitly describe the technical problem in the specification, as this will often assist in demonstrating to the examiner that the claimed business method presents a technical solution and thus exhibits the required technical feature for grant. In Japan, like the US, there is no requirement that a specification include a description of the technical problem. However, there are, as Nobushige Furuhashi, a partner of Abe, Ikubo & Katayama explained, benefits during prosecution in stating the technical problem – doing so may enhance an applicant’s chances of favourable examination as it is an opportunity to frame the problem that the invention overcomes in a way favourable to the applicant. The panel went on the discuss the effects of stating the technical problem and what impacts this might have for prosecution of the application where objections are raised based on novelty, obviousness, sufficiency and unity of invention, as well as the importance or otherwise of having an identified technical problem in cases of patent infringement.
The panel session was a timely reminder of the difficulties faced by applicants filing patents in multiple jurisdictions and a valuable opportunity to learn more about how the specific issue of describing the technical problem is treated in different jurisdictions."