p. 57719. Inventive step
- L. Bently, L. BentlyHerchel Smith Professor of Intellectual Property, University of Cambridge
- B. Sherman, B. ShermanProfessor of Law, University of Queensland
- D. GangjeeD. GangjeeAssociate Professor of Intellectual Property Law, University of Oxford
- and P. JohnsonP. JohnsonProfessor of Commercial Law, Cardiff University
Abstract
This chapter examines the requirement that an invention is patentable if it involves an ‘inventive step’ or ‘non-obviousness’, that is, the invention is not obvious to a person skilled in the art, and the difficulty of deciding whether an invention is obvious (non-inventive) or non-obvious (inventive). It first considers the approach used by the European Patent Office to deal with the obviousness of a patent and compares it with that in the UK. It then explains the concept of the state of the art in an obviousness examination before concluding with an assessment of the way in which the inventive step has been addressed in a number of different circumstances.
1 Introduction
In this chapter, we focus on the requirement that to be patentable, an invention must involve an ‘inventive step’.1 An invention is said to involve an inventive step if it is not obvious to a person skilled in the art2 (the terms ‘inventive step’ and ‘non-obviousness’ are used interchangeably).3 The question of whether an invention is obvious can arise during examination in the national patent offices, where it is ex parte. It can also arise inter partes in opposition proceedings at the European Patent Office (EPO), or in revocation proceedings before the Comptroller or the courts. In each case, the onus is on the patent office, the opponent, or the party seeking revocation (as opposed to the applicant or patentee) to establish that the invention is obvious. While the inventive step requirement has long been a key element of patent law, it may become more important in the future. This is a result of changes that have taken place at the EPO, but not in the United Kingdom, in the way in which patentable subject matter is determined. As we explained in Chapter 17, as a result of the Pension Benefits System decision,4 the Technical Board of Appeal has shifted the focus of attention away from subject matter to inventive step. (The Board held that while the claim for an apparatus for controlling a pension benefits system was an invention for the purposes of Article 52(1) of the European Patents Convention of 1973, or EPC 1973—now Article 52(1) of the EPC 2000—it lacked inventive step and thus was not patentable.) While there is a close relationship between the two requirements (particularly as a result of the focus on ‘technical character’ when determining subject matter), it is not clear what the consequences of this shift will be. It is, however, an important change that needs to be followed in the future.
As we will see, deciding where the line should be drawn between inventions that are obvious (or non-inventive) and those that are inventive (or non-obvious) is a difficult task. As well as being one of the most important requirements for patentability, inventive step is also one of the most problematic. Indeed, it has been said that inventive step is ‘as fugitive, impalpable, wayward, and vague a phantom as exists in the whole paraphernalia p. 578↵of legal concepts’.5 In part, this is because the examination for inventive step is a factual inquiry; to this end, it has frequently been dubbed a ‘question of fact’ or a ‘jury question’ (although juries have not sat in patent cases in the United Kingdom since 1883). The corollary of the factual nature of the inquiry is that precedents should be treated with caution, even those that involve decisions on the same invention. The evaluative nature of the inquiry also means that reasonable people can easily reach different conclusions—thus making it extremely difficult to predict the outcome of an obviousness attack or objection.6 This has led to accusations of uncertainty and to the arbitrary use of discretion.7 It also means that on appeal, courts are often reluctant to overturn decisions of the lower courts.
While the novelty examination ensures that there is a quantitative difference between the invention and the state of the existing knowledge, non-obviousness ensures that this difference is of a quality deserving of patent protection.8 By ensuring that patents are only granted for non-obvious inventions, the requirement that there be inventive step acts as a qualitative threshold that ensures that only meritorious inventions are granted protection. The need to show inventive step as a condition for patentability has been explained on the basis that ‘if every slight difference in the application of a well-known thing [were to be] held to constitute a ground for a patent’, it would lead to an unjustifiable interference with trade.9 As the Court of Appeal said in PLG Research v. Ardon International,10 the ‘philosophy behind the doctrine of obviousness is that the public should not be prevented from doing anything which was merely an obvious extension or workshop variation of what was already known at the priority date’. In more positive terms, it has been suggested that the obviousness inquiry encourages people to carry out research that might not otherwise be undertaken. More specifically, the fact that patents are not granted for obvious inventions is said to encourage speculative or risky research. Or as Birss J put it, patents ‘exist to provide incentives for costly and uncertain research but not all costly and uncertain research will lead to patentable inventions’.11
2 Determining whether an invention is obvious
In order to harmonize the divergent approaches to obviousness that had been adopted in the member states prior to the passage of the EPC, the EPO set out to develop an p. 579↵approach to the assessment of inventive step that was objective, economical, and transparent. In so doing, it also hoped to bring a degree of certainty to the area.12 As the Chartered Institute of Patent Attorneys (CIPA) Guide to the Patents Act 1977 says, the approach to inventive step at the EPO has two key characteristics. The first, which we encountered in our discussions about patentable subject matter in Chapter 17, is that it is ‘an “effects-based” approach, so that whether or not a patent is granted ultimately depends on whether there is a new effect, a new function or result flowing from the claimed features’.13 The second is that the examination for whether there is the requisite inventive step is conducted via ‘the problem-and-solution approach’.14 This is based on an image of the invention as a solution to a problem. Accordingly, an inventive step is seen as ‘a step from the technical problem to its solution’.15 As such, rather than asking whether an invention is obvious, the EPO asks whether the solution that an invention provides to the problem being addressed would have been obvious to the person skilled in the art. In more positive terms, this means that for an invention to be patentable, the solution must have been not obvious to the person skilled in the art at the priority date of the invention in question. There are a number of subsidiary steps that need to be undertaken when applying the problem-and-solution approach. In particular, it requires the tribunal to: ascertain the technical field of the invention (which is used, amongst other things, to determine the field of expertise of the person skilled in the art); identify the closest prior art in the field; identify the technical problem that can be regarded as solved in relation to the closest prior art; and finally, ascertain whether the technical feature(s) that form the solution claimed could be derived by the skilled person in a manner obvious from the state of the art.16
Over the period during which the problem-and-solution approach has been utilized at the EPO, it has proved to be a useful technique for determining inventive step. It is also one that was applied in nearly all situations. Despite this, aspects of the approach were called into question by the Technical Board of Appeal (TBA) in Alcan/Aluminium alloys.17 In this decision, the Board said that while it was often assumed that the problem-and-solution approach was applicable in all situations, it was better seen as one of many possible approaches that could be adopted when assessing inventive step. The TBA said that there was no legal reason why all cases involving inventive step should be shoehorned into a single approach. In situations where the invention broke new ground, the test was inappropriate because there was no close prior art from which to formulate the problem. In these circumstances, the problem-and-solution approach was unnecessarily artificial. Because this approach proceeds on the basis of a search that is made with actual knowledge of the invention, it also suffered from the fact that it was inherently based on hindsight.18
Jacob LJ raised similar objections when he said that the key problem lay with the reformulation or retrospective construction of a problem was the weakest part of the problem-and-solution approach. This was particularly the case in those situations where the p. 580↵‘invention involves perceiving that there is a problem or in appreciating that a known problem, perhaps “put up with” for years, can be solved’.19
In a sense, what the TBA did in Alcan was to align the problem-and-solution approach more closely with the types of research under consideration. By modifying (and narrowing) the circumstances where the test may be applied, the Board has served to strengthen the test. Despite these criticisms, the problem-and-solution approach is consistently applied by the EPO Boards of Appeal to determine whether or not there is the requisite inventive step.
2.1 Approach in the United Kingdom
Whatever the current state of the law at the EPO, English courts have largely remained isolated from and resistant to the adoption of the problem-and-solution approach.20 Instead, when considering the way in which an invention is to be interpreted, they have relied on the approach set out in the Windsurfing decision.21 In this decision, the Court of Appeal said that the court must begin by identifying the inventive concept embodied in the patent. The court should then identify the differences that exist between the cited prior art and the alleged invention. Finally, the court should ask whether, viewed without any knowledge of the alleged invention, those differences constitute steps that would have been obvious to the skilled man, or whether they required a degree of invention.22 In the Court of Appeal decision of Pozzoli,23 Jacob LJ reordered and elaborated on the Windsurfing test. While judicial attempts to restructure well-established rules, such as those in Windsurfing, are often counter-productive, Jacob LJ’s reformulation is useful—particularly insofar as it takes the question of what is the invention more seriously. Under the new approach, which is known as the Pozzoli approach’, the court asks four questions, as follows.
Who is the notional ‘person skilled in the art’? (This involves identifying the relevant common general knowledge of that person.)
What is the inventive concept of the claim? (If that cannot readily be identified, the court must construe it.)
What, if any, difference exists between the matter cited as forming ‘part of the state’ of the art and the inventive concept of the claim, or the claim as construed?
Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps that would have been obvious to the person skilled in the art, or do they require any degree of invention?24
p. 581↵While courts have occasionally reminded us that these questions are only a tool for answering the ultimate statutory question—‘Was the invention obvious?’—and that adherence to any rigid formula can be a mistake,25 nonetheless the Pozzoli approach is widely and consistently used to determine when an invention is obvious in the United Kingdom.
The decision to use the approach set out in Pozzoli rather than the approach used at the EPO was reinforced by the fact that the problem-and-solution approach has been subject to a considerable degree of criticism in the United Kingdom.26 As well as being criticized for its use of hindsight,27 the test is also said to be unnecessarily artificial because many inventions are developed without having a problem in mind. Perhaps the most important objection is that while the problem-and-solution approach is presented as being applicable to all types of research, there are situations in which its use is inappropriate. While this approach is sensibly applied to the improvement of existing techniques, it is not easy to formulate a problem for many inventions, particularly in the chemical/pharmaceutical field.28 As well as being difficult to apply in situations involving the discovery of a new application for an existing technique or product, it is said to be wholly inappropriate where an innovation satisfies a latent need that has never previously been expressed.29 In the case of so-called ‘problem inventions’, where the solution becomes obvious once the problem has been formulated, the reformulation of the research undertaken in terms of problem and solution ‘is equivalent to emptying the definition of the problem of any substance, and thereby depriving the problem-and-solution approach of any effectiveness’.30
In determining obviousness under the Patents Act 1977, British tribunals have tended to utilize the Pozzoli approach rather than the problem-and-solution approach. Nevertheless, there has been a growing belief that the problem-and-solution approach ought to be used in the United Kingdom.31 In part, this has been motivated by a realization that the two tests may not be as conceptually different as they first appeared,32 by the fact that the EPO approach has precursors in UK patent law,33 and by the fact that the Alcan decision goes some way towards resolving some of the criticisms that have been made of the EPO approach.34 Perhaps the strongest support for the use of the p. 582↵problem-and-solution approach comes from the House of Lords’ decision in Biogen v. Medeva,35 where Lord Hoffmann said that a ‘proper statement of the inventive concept needs to include some express or implied reference to the problem which it required invention to overcome’.
While it is important to keep in mind the different approaches that have been adopted in the United Kingdom and at the EPO, there are enough similarities for them to be dealt with together. Perhaps the best starting point for thinking about whether an invention is obvious is with section 3 of the 1977 Act/Article 56 of the EPC 2000 (ex Article 56 of the EPC 1973), which states that an invention is taken to involve an inventive step ‘if it is not obvious to a person skilled in the art, having regard to any matter that forms part of the state of the art’. Stated in this way, the inquiry gives rise to three further questions.
Who is the ‘person skilled in the art’, and what skills and knowledge do they have?
What is the ‘invention’ that is being examined?
What does it mean to say that something is ‘non-obvious’?
We will deal with each in turn.
3 Person skilled in the art
As section 3 of the 1977 Act and Article 56 of the EPC 2000 make clear, obviousness is determined from the standpoint of the average person skilled in the art.36 This means that when considering whether an invention is obvious, the tribunal views the invention through the eyes of a notional interpreter equipped with the attributes, skills, background knowledge, and qualifications relevant to the field in which they work.37 While the person skilled in the art ‘must have characteristics grounded in reality … no real person is the same as the notional person skilled in the art’.38
The objective nature of the inquiry means that the actual process by which the invention came about is irrelevant.39 As such, it does not matter if an invention arose as a result of years of research by a team of leading experts, or as a chance result by an unskilled person. All that matters is whether the person skilled in the art would consider the invention to be non-obvious.40
p. 583↵The skills and qualifications of the person skilled in the art, as well as the resources and equipment that are available to that person, vary according to the particular invention in question.41 More specifically, the qualities of the skilled person depend on the technical field into which the invention falls. Determining the technical field of the invention is made easier by the fact that at the EPO, the patent description should specify the technical field into which the invention falls.42 Similarly, in the United Kingdom the description begins with a short title that indicates the general subject matter of the invention. The choice of technical field is particularly important in situations where the invention is made up of a mixture of technical and non-technical features. This is particularly the case in relation to computer-related inventions and business-method patents. To date, the tribunals have been careful to ensure that the person skilled in the art has expertise only in technical fields. For example, in Comvik,43 which concerned the invention of a new single-user identity card (SIM card) which dealt with the way in which charges for different types of mobile phone call were organized for digital mobile telephones,44 the Technical Board of Appeal said that:
[The] skilled person will be an expert in a technical field. If the technical problem is concerned with a computer implementation of a business, actuarial or accountancy system, the skilled person will be someone in data processing, and not merely a businessman, actuary, or accountant.45
If the skills base of the expert were extended to include non-technical areas such as business or management skills, it would increase the patentability of business patents and other types of invention that are currently excluded from protection.46
The skills attributed to the person skilled in the art will vary depending on what is regarded as normal in the field in which they are deemed to operate. In some cases, the person skilled in the art may have a PhD and a well-established research record;47 in other cases, they may have no formal academic qualifications and only have ‘ordinary’ skills.48 While the person skilled in the art is normally an individual, in situations where research is carried out by groups of researchers, the court will adopt the standpoint of a notional research team.49
While the skill and qualities of the notional interpreter vary according to the art in question, one trait that is shared by skilled persons irrespective of the field in which they work is that they are uninventive.50 It has also been said that the person skilled in the art p. 584↵is ‘conservative’, in the sense that they would not go against established prejudices, try to enter into sacrosanct or unpredictable areas, or take incalculable risks.51
3.1 State of the art
In considering whether an invention is obvious, the person skilled in the art has regard to any matter that forms part of the state of the art at the priority date of the invention.52 With two notable exceptions, the state of the art in an obviousness examination is the same broad concept as is used in a novelty examination (which was discussed in Chapter 18).53
The first difference is that patent applications that have priority over the application in suit but have not yet been published, are not included in the state of the art for the purposes of assessing inventive step.54 The second difference is that when considering whether an invention is non-obvious (but not whether it is novel), it is possible to combine together (or ‘mosaic’) information from different sources. The act of combining documents must be ‘natural and logical’.55 It must also be a process that an unimaginative skilled person would (as opposed to could) follow.56 Documents that conflict or are unrelated cannot be combined to demonstrate obviousness.57
The state of the art is made up of everything that is made available to the public before the date of filing—irrespective of the language of publication or how widely it has been circulated.58 The potentially broad nature of the state of the art is restricted by the fact that the prior art is judged through the eyes of a person skilled in the art at the priority date. On this basis, the courts have accepted that a person skilled in a particular art may place greater emphasis on certain types of information than on others.59 In more extreme cases, the fact that the person skilled in the art is able to evaluate the prior art may mean that certain types of information are discarded.60
The potentially broad nature of the state of the art is further restricted by the fact that the skilled person is only expected to have scrutinized the information available in their own or closely related fields. The impact that this has on the material available to the person skilled in the art can be seen in Mobius/Pencil sharpener,61 which concerned an application for a patent over a hand-operated pencil sharpener with a device that prevented p. 585↵pencil shavings from escaping. The application survived an obviousness attack on the basis of two pieces of prior art: one concerned with pencil sharpeners; the other, with savings boxes. The Technical Board of Appeal held that while the prior art concerning the pencil sharpener represented the closest prior art, it failed to suggest the answer employed in the invention and was thus of no relevance. Given the technological differences between the two fields, the prior art in relation to savings boxes was also of no relevance because it was not in a closely related or neighbouring field. Consequently, the person skilled in the art would not have utilized the solution set out in the prior art relating to the savings box.62
In addition to being confronted with specific material from the state of the art, the person skilled in the art is also presumed to have the benefit of the ‘common general knowledge’ of the particular art or technical field in question.63 As well as being a valuable source of information in its own right,64 the common general knowledge is also important because it enables the notional interpreter to combine different pieces of prior art, and to develop and build upon existing pieces of prior art (so long as they do not do anything inventive). The common general knowledge is also important because it acts as the basis from which documents are interpreted.65
To qualify as common general knowledge, ‘a matter must be generally known and generally regarded as a good basis for further action by the bulk of those engaged in the art in question’.66 While prior art may be published anywhere in the world, it seems that common general knowledge is more closely tied to the United Kingdom. As Arnold J said in relation to an obviousness challenge brought in the United Kingdom, for information to qualify as common general knowledge, it needs to be shown, at a minimum, that it was common general knowledge in the United Kingdom. As he said ‘I do not think it matters that a fact was common general knowledge in (say) China, if it was not common general knowledge [in the United Kingdom]’.67 The sources from which the notional skilled addressee acquires their general knowledge vary depending on the nature of the technical field in question.68 Frequently, the tribunal assumes that the common general knowledge is that which can be found in encyclopaedias and standard dictionaries. Where this is the case, care must be taken to avoid a logical fallacy: common general knowledge will be in encyclopaedias, but that does not mean that everything in such works is common general knowledge.69 Individual patent specifications are not normally regarded as forming part of the common general knowledge.70 Scientific papers become part of the general knowledge only ‘when it is generally known and accepted without question by the bulk of those p. 586↵who are engaged in the particular art’.71 Usually, information that is common general knowledge will have been used in some capacity or other. The fact that a concept has not been used does not mean that it is necessarily excluded, but only that it is unlikely to form part of the common general knowledge.72
While in many cases, common general knowledge will be used in conjunction with specific disclosures (such as ‘particular concrete documents or well defined prior use’73), in some situations an obviousness challenge may be brought purely on the basis of common general knowledge or, as the judges prefer, ‘obviousness over common general knowledge alone’. While it is theoretically possible to rely on common general knowledge on its own to challenge the obviousness of an invention, the courts have been at pains to point out the dangers of only using common general knowledge. The reason for this is that only using common general knowledge (particularly where a combination of individual pieces of common general knowledge is used) poses a ‘particularly acute hindsight problem’. This is because while an obviousness challenge based on concrete items of prior art, even one based on combinations of features of the prior art, is ‘not one which was created with hindsight knowledge of the invention’, this is not the case where the challenge is based on common general knowledge alone (which requires an ex post facto review of what was known which is inevitably shaped by knowledge of the invention). As Birrs J said, if ‘an invention is not obvious over the concrete prior art which is relied on, the court is entitled to be sceptical that an argument that it is nevertheless obvious over common general knowledge alone is correct’.74
4 What is the ‘invention’?
As the Court of Appeal pointed out in the Windsurfing decision, when considering whether an invention is non-obvious, the court must identify the inventive concept embodied in the patent.75 As we saw in relation to patentable subject matter and novelty, the way in which an invention is interpreted may play an important role in determining whether it is patentable. This is also the case with inventive step. As Lord Hoffmann said, before you can apply the test for obviousness stated in section 3 of the 1977 Act and ask whether the invention involves an inventive step, ‘you first have to decide what the invention is’.76 As we explained earlier, one of the consequences of Pension Benefits Systems is that it places greater emphasis on the requirement that there must be an inventive step. In particular, it places more emphasis on the way in which the invention is characterized—that is, on the way in which the ‘inventive concept’ is determined.
p. 587↵At the EPO, the task of identifying the invention is achieved via the problem-and-solution approach. More specifically, based on an image of the invention as a solution to a problem, to identify the ‘thing’ that must be non-obvious, it is necessary to identify the particular problem that the invention addresses. As with most aspects of the obviousness inquiry, this is understood from an objective point of view at the priority date of the invention.77 The task of having to identify the problem that the invention solves is made easier by the fact that the EPC 2000 Implementing Regulations provide that ‘the description should disclose the invention as claimed in such terms that the technical problem (even if not expressly stated as such) and its solution can be understood’.78
While, in many cases, it is possible to rely upon the problem that is disclosed in the patent application, in some cases the patent application cannot be used to provide an objective statement of the problem.79 In situations where the problem is not properly set out in the application, the EPO may reformulate the problem.80 In these circumstances, the nature of the problem is determined from the differences between the closest prior art81 and the invention (which is seen in terms of its effects rather than its structure).82 This may refer to the need to achieve the same kind of result, an improved result (for example a quicker, stronger, or cheaper result), or a different result from that which is achieved by the existing art.83
As we explained earlier, English courts have largely remained resistant to the problem-and-solution approach. While there have been criticisms of the problem-and-solution approach in the United Kingdom, there has been relatively little discussion of what alternative approach ought to be adopted.84 It seems that British tribunals distil the ‘invention’ from the specification (presumably assessed in relation to the invention as understood from the ‘normal’ interpretation of the claims (that is, purposively from the perspective of the relevant person skilled in the art, as opposed to the scope of protection under the doctrine of equivalents).85 It is important to recall that in Biogen v. Medeva,86 Lord Hoffmann said that a ‘proper statement of the inventive concept needs to include some express or implied reference to the problem which it required invention to overcome’. p. 588↵More pertinently, in Cipla v. Glaxo,87 Pumfrey J said that he was ‘not persuaded that’ the structured approach to obviousness at the EPO was ‘substantially different from the Windsurfing approach subject to one qualification’—namely, that, unlike the case in the United Kingdom, the EPO will only consider obviousness on the basis of the closest prior art. Given the importance of this issue, it warrants more attention. This view was reiterated by the Court of Appeal in Generics (UK) v. Daiichi Pharmaceutical,88 when Jacob LJ disagreed with the suggestion that the Pozzoli/Windsurfing approach was different from the EPO’s problem-and-solution approach saying that the ‘problem/solution approach only applies at stage 4 [of the Pozzoli/Windsurfing approach]. The first three stages must be carried out at least implicitly as much as for the problem/solution approach as for any other.’89
One question that arises in this context concerns the way inventions that are made up of a mixture of technical and non-technical features are to be characterized. While it is legitimate for there to be a mix of technical and non-technical features when deciding patentable subject matter under section 1(2)/Article 52(1),90 this is not the case when deciding whether there is an inventive step. As the Technical Board of Appeal said in Comvik, non-technical factors are not relevant when deciding whether there was inventive step. This means that where an invention consists of a mixture of technical and non-technical characters, the non-technical features should be ignored:91
This approach, which is actually a method of construing the claim to determine the technical features of the claimed invention, allows separating the technical from the non-technical features of the claimed invention even if they are intermingled in a mixed-type claim.92
The exclusion of non-technical features (which echoes the approach currently taken to subject matter in the United Kingdom) has important consequences for the fate of computer-related inventions (particularly those in relation to business and economics). Given that in many cases, the real innovations will be in solving managerial or business problems rather than in relation to information technology per se, the exclusion of non-technical features means that the inventive step is judged against standard computer technology. As Pension Benefits Systems and Comvik showed, one of the consequences of this is that such inventions are now excluded at the EPO on the basis that they lack inventive step. While UK courts have been highly critical of the way inventions are characterized for the purposes of an obviousness inquiry at the EPO, the approach outlined in Comvik and Pension Benefits has been adopted in subsequent decisions at the EPO.93 This divergence in the way the invention is construed for the purpose of deciding inventive step must be seen in conjunction with the different approaches to patentable subject matter discussed earlier.94 When seen in this broader perspective, it seems that while the tribunals in the United Kingdom and at the EPO may have adopted different approaches, in most cases they seem to lead to the same result.
5p. 589 Is the invention ‘obvious’?
Once the person skilled in the art and the invention have been identified, it is then possible to consider whether the invention is non-obvious.95 While the question of whether an invention is non-obvious is widely regarded as one of the most difficult questions in a difficult area of law, in some ways it is not that different from other questions that the courts are required to consider, such as whether a contractual term is fair or whether evidence is relevant to an issue. In other ways, however, the task of determining whether a particular invention is non-obvious is not only different, but also more problematic. One reason for this is that in patent law, the tribunals are frequently required to pass judgment on complex and novel technologies. While in deciding whether a person acted negligently, judges may be able to rely on their background experience and knowledge, there may be little to guide them when they are forced to consider, for example, the inventiveness of a genetic modification. These problems are exacerbated by the fact that questions about the obviousness of an invention may arise some time after the invention was made. It also means that the way in which inventive step is determined will change as a technical field develops. For example, while in the 1980s the futuristic nature of molecular biology meant that the threshold for inventiveness was easily crossed, advances over the last few decades or so mean that the criteria will be harder to satisfy. In particular, as more ‘is known about the various genomes and the function of the constituent genes, the more difficult it will be to establish an inventive step for any isolated gene’.96
While ascertaining whether an invention is obvious is a difficult task, it is made easier by the fact that the question is asked from the perspective of the person skilled in the art. Although a non-specialist may find it difficult to assess whether an invention is obvious, a person who has knowledge of the area—particularly of what is regarded as normal progress in the field—will find it much easier to judge whether something is inventive. The task of determining whether an inventive step is present is also made easier by the fact that the courts invariably draw upon the evidence of experts. While experts are not able to take the place of the court in making the final decision as to whether an invention is obvious, they play an important role in providing the court with a sense of what would be normal in the field (and thus what would be unexpected and inventive).97 However helpful these factors may be, it still leaves us with the question: what does it mean to say that an invention is ‘obvious’?98
In recent years there has been increased attention given to concept of ‘plausibility’ and the role it plays in obviousness inquiries. In essence this requires an applicant to show that what has been claimed meets a specific standard; namely that it is plausible. While it has been suggested that plausibility as a concept arises from the EPO problem-and-solution approach,99 it has a much older history which can be traced back to the emergence of formula-based chemical inventions in the later part of the nineteenth century. Then, as now, the particular nature of chemical inventions meant that a single patent p. 590↵could potentially cover thousands of chemical compounds.100 (Similar problems also now arise with genetic inventions.) Patent law’s willingness to accept these speculative inventions without the need for an applicant to test whether they really worked created further issues. Given that it was not necessary (nor indeed often possible) to show that every possible manifestation of the invention was feasible, a secondary question arose: what was the threshold of proof that needed to be met for an application to be valid? While this question, which has been raised in relation to inventive step, industrial application, and sufficiency, has been described as a threshold test,101 it is better seen as a qualitative evidential criterion (not unlike obviousness itself) that is designed to deal with a specific problem that arose with the acceptance of class or group-based inventions. While plausibility may appear to provide an answer to these problems, it really only defers the question to a new context. This is reflected in the different criteria that have been used to determine whether a claim is plausible ranging from the need for the claim to be ‘credible as opposed to speculative’,102 to be ‘more than incredible’103 through to the idea that ‘the standard for assessment of plausibility is not the same as assessment of obviousness’104 or, as Kitchin LJ said, ‘the patent must disclose a practical application for the claimed product and that a plausible or reasonably credible claimed use or even an educated guess as to such a use could be sufficient for that purpose. On the other hand, a merely speculative use does not suffice’.105
Perhaps the best approach to this issue is the approach adopted at the UK IPO which has expressly said that it will not follow the suggestion that plausibility is a threshold test.106 Rather, the IPO will continue to apply the Pozzoli/Windsurfing test and will only make recourse to the question of whether it is plausible to work an invention across the scope of the claims as a sufficiency objection, rather than as an inventive step objection. Having said this, the IPO does recognize that the plausibility of a prima facie selection invention may need to considered as part of the Pozzoli/Windsurfing test. This is discussed later in the chapter.
5.1 Meaning of ‘inventive step’
One of the things on which courts and commentators regularly agree is that the qualitative and factual nature of the inquiry means that it is not possible to reduce obviousness to a precise verbal formula107—that is, it is not possible to define either ‘inventive step’ or ‘non-obvious’ in a meaningful or helpful way. While it may not be possible to formulate a test that enables us to predict with accuracy whether an invention will be regarded as obvious, it is possible to offer general guidance as to some of the factors that have shaped obviousness inquiries in the past.108
An important factor that has influenced decisions as to whether an invention is obvious is the extent to which the notional researcher would have had to exercise choice in the inventive process. In situations where there is no opportunity or need for an inventor to enter into and shape the research process—that is, where there is ‘no real choice’ or ‘the p. 591↵skilled man is in an inevitable “one-way street”’109—the invention is likely to be obvious. In these situations, there is little or no scope for a researcher to act in a technically creative way. The converse of the need for choice is that there is a possibility that the research will fail. Where the research involves no risk or uncertainty—that is, where the results are predictable or likely—the invention is more likely to be obvious and thus unpatentable.
In a sense, the focus on the degree of choice or control exercised by the notional inventor builds upon the idea of invention as a process whereby the inventor (as creator) engages with ‘nature’ to produce something new. More specifically, it builds upon a model of the invention as a process in which the inventor is actively involved with, and ultimately shapes, the final product. It presumes that there is a degree of human intervention in the production of the invention. In situations where there is no real need nor opportunity for a researcher to make decisions about the shape and nature of the research, there is no real potential for ‘human intervention’ and, as such, no inventiveness. This is the case, for example, where an invention results from the application of a known technique to a known problem, or where it was obvious to try the technique in question.110 It is also the case where the person skilled in the art is ‘directly led as a matter of course’ to the invention.111
The mere fact that the notional researcher must have exercised a degree of choice and control over the research process is not in itself enough for the final product to be non-obvious. Put differently, while the exercise of (mental) labour and effort is a necessary condition for an invention to be non-obvious, it is not a sufficient condition. In order for an invention to be non-obvious, it needs to be shown that the way in which the choice is exercised is technically creative112—a notion that changes not only across technologies (both in terms of how it is expressed and also the amount of ingenuity involved), but also over time.113
A number of different factors have been taken into account when determining whether an invention is technically creative. At a general level, a distinction is drawn (similar to the distinction drawn in copyright law between ‘sweat of the brow’ and creativity) between the exercise of routine skills (the results of which are non-patentable) and inventive skills (the results of which are). This is based upon the idea that inventions that are based on laboratory techniques, are routine, or which follow ‘plainly or logically from the prior art’114 do not contribute anything to ‘the real advancement of the arts’115 and, as such, are not worthy of protection.
The courts have also taken care to ensure that only technical factors are taken into account when determining inventive step. To this end, it was held that the fact that a particular route was not tried for some time because it was believed that the outcome would p. 592↵not get regulatory approval did not make it a route that was not ‘obvious to try’.116 Equally, while the activities of a manager or accountant might play an important role in shaping the research process, their input is not regarded as ‘technical’ and, as such, is not taken into account when deciding whether an invention is non-obvious.117 This was exemplified in the Pension Benefits Systems decision when the Technical Board of Appeal said that ‘the improvement envisaged by the invention [which was for a computer apparatus for controlling a pension-benefits system] is an essentially economic one, i.e. lies in the field of economy, which, therefore cannot contribute to inventive step’.118 As such, the claimed subject matter lacked inventive step. While the level of inventiveness required must be more than the mere application of time, money, and effort,119 the courts have acknowledged that ‘in practice what is technically feasible is unlikely to be wholly isolated from what is commercially feasible’.120 This means that in some cases, commercial and technical considerations may be so inextricably linked that commercial factors may be relevant when considering whether a contribution is technical.121
5.2 Specific applications
Given that decisions about the obviousness of an invention are closely linked to the facts of each case, it may be helpful to look at the way in which inventive step has been approached in a number of different circumstances.122
5.2.1 Technique or avenue for research
In some situations, the inventive step may lie in the technique or the avenue of research that is followed. In these circumstances, an invention will be obvious if a person skilled in the art would (rather than could) have taken the route in question.123
The person skilled in the art is assumed to have tried all avenues that have a good prospect of producing valuable results.124 Factors that might in reality mean that one route is tried before another—such as low cost, easy availability of starting materials, or the likely time before the outcome of an experiment is known—are ignored, since they are not pertinent to whether or not the route is technically obvious. As Laddie J explained in Brugger v. Medic Aid:
[I]f a particular route is an obvious one to take or to try, it is not rendered any less obvious from a technical point of view merely because there are a number, and perhaps a large number, of other obvious routes as well.125
p. 593↵The position is the same if the route to an invention requires the person to take a succession of obvious steps.126
In order for a particular avenue of research to be obvious, there is no need for a researcher to be 100 per cent certain that the chosen route will lead to a particular result; thus ‘a route may still be an obvious one to try even if it is not possible to be sure that taking it will produce success, or sufficient success to make it commercially worthwhile’.127 All that needs to be shown for an invention to be obvious is that there was a reasonable expectation of success, or that there was an expectation that the avenue of research ‘might well produce a useful desired result’.128 In John Manville’s Patent,129 Diplock LJ said that an invention would be obvious if the ‘person versed in the art would assess the likelihood of success as sufficient to warrant actual trial’. The test of ‘expectation of success’ cannot be applied in all situations. While the test is useful where predictable methods are relied on to solve technical problems (for example methods of genetic engineering, such as cloning and expressing DNA sequences), as the Technical Board of Appeal noted, the test is not useful where an invention depends on random techniques (such as mutagenesis). Where the outcome of a process depends on random events, luck, or chance, the Board said that it was not appropriate to attempt to evaluate the expectation of success: ‘Under these circumstances, as for example in a lottery game, the expectation of success always ranges irrationally from nil to high, so that it cannot be evaluated in a rational manner based on technical facts.’130
The inventiveness of a particular avenue of research can arise in a number of different ways.131 In some fields, an avenue of research will not be obvious to try because the person skilled in the art considers the whole field to be unpredictable.132 In other circumstances, the inventive step might arise from the fact that the research overcomes ‘prejudices in the art’133—that is, it breaks with current views about an area of research. The decision to follow a particular line of research may be inventive where it had previously been thought that the area was either exhausted or fruitless. Similarly, the decision to follow a line of research may be inventive where all recent developments have exploited a different avenue.134 As the EPO Guidelines explain:
[As] a general rule, there is inventive step if the prior art leads the person skilled in the art away from the procedure proposed by the invention. This applies in particular where a skilled person would not even consider carrying out experiments to determine whether these were alternatives to the known way of overcoming a real or imagined technical obstacle.135
p. 594↵Similarly, if a document in the prior art suggests that the route in question is unlikely to work but the patentee successfully took the route, it is likely that the invention will be patentable. In this context, it is important to keep in mind the comment by Lord Hoffmann that the mere fact that scientific opinion might have thought that something was ‘perfectly useless’ does not mean that practising it, or having the idea of making a preparation to do so, necessarily amounts to an inventive step. If this were allowed, it would lead to the paradoxical situation in which ‘anyone who adopted an obvious method for doing something which was widely practised, but the best scientific opinion thought was pointless, could obtain a patent’.136
A particular line of research will also be inventive where it would not have been pursued by the person skilled in the art. It is important to show as well that the research was selected for technical reasons; factors such as the cost of the research are not taken into account. In this context, it is interesting to note that, in Biogen v. Medeva,137 the evidence suggested that, whereas a person less skilled in the art might have regarded the route as being obvious, a person skilled in the art would consider it so beset by obstacles as not to be worth trying.138
5.2.2 Overcoming obstacles
In some cases, the ingenuity and skill needed for an invention to be non-obvious lies not so much in the identification of a research problem or in reaching the final goal as it does in the way in which the obstacles and problems that arise en route to reaching the final goal are overcome.139 Where unforeseeable difficulties exist, the outcome will be non-obvious if the route chosen to overcome those difficulties is inventive.140 However, where the obstacles are overcome through tenacity, sound technique, or trial and error, the outcome remains obvious.141
5.2.3 Selection of the problem
In some cases, the non-obvious nature of an invention may lie in the problem that has been selected, or in the selection of the goals to be pursued.142 In situations where the inventiveness lies in the way in which the problem to be solved is chosen, for the resulting invention to be non-obvious, the perception of the problem must be beyond the capability of the person skilled in the art.143 In Boeing/General technical knowledge,144 the patent application related to a mechanism for extending a high-lift device (similar to a crane); the problem to be solved was how this could be done without using long cables. The solution developed by the applicant involved using short cables and pulleys. The Examining Division rejected the application on the basis of two pieces of prior art: one from the p. 595↵aircraft-engineering field; the other, a patent application directed at no specific field. The Technical Board of Appeal stated that inventiveness could not be found in the perception of the problem, since the overcoming of recognized drawbacks and the achievement of consequent improvements must be considered as the normal task of a skilled person.
5.2.4 Unexpected result
Another situation where the pursuit of an obvious route may result in a non-obvious invention is where the outcome is, in some important way, unexpected. If a route is obvious to try in response to a known problem, but the particular route chosen produces unexpected advantages, the result might be inventive. This is because the person skilled in the art would not associate the avenue of research with the final result.145 Where the route taken merely produces a result of the sort that was expected, but more cheaply or efficiently, it is unlikely to be inventive. While an invention would be obvious where the skilled worker would think that there was a reasonable expectation if success, this would not be the case where the skilled worker required skills beyond the common general knowledge.146
5.2.5 Selection inventions
Particular problems arise where a patent is sought for a compound or class of compounds that are a selection from a broader class previously disclosed by a prior document. As we noted earlier, the patentability of the so-called ‘selection inventions’ in the United Kingdom was traditionally determined using the criteria set out in IG Farbenindustrie AG’s Application.147 However, following the Court of Appeal’s 2010 decision in Dr Reddy’s Laboratories (UK) v. Eli Lilly,148 IG Farbenindustrie is no longer followed in the United Kingdom. Instead, the question to be asked now is: does the invention make a technical contribution or is it merely an arbitrary selection? If the latter, the invention is obvious. This approach is based on the approach that has been developed by the Enlarged Board of Appeal at the EPO:149 a ‘selection from the prior art which is purely arbitrary and cannot be justified by some useful technical property is likely to be held to be obvious because it does not make a real technical advance’.150
As the UK Intellectual Property Office (IPO) Manual of Patent Practice states, the ‘unknown technical effect (ie advantage gained or disadvantage avoided) relied upon to justify a selection should be clearly identified or otherwise made plausible (eg discernable from tests provided in the application) in the specification at the time of filling’.151 In order for a selection to be considered inventive, the UK IPO provides:
If the alleged contribution is a technical effect which is not common to substantially everything covered by a claim, it cannot be used for the purposes of judging obviousness;
A selection from the prior art which is purely arbitrary and cannot be justified by some useful technical property is likely to be held to be obvious because it does not make a real technical advance;
Later evidence may be cited to support a technical effect made plausible by the specification.152
5.3 Secondary evidence
While the question of whether an invention is obvious is ultimately decided by the tribunals, at times they have been willing to accept so-called ‘secondary evidence’ that supports a claim that an invention is non-obvious.153 In effect, secondary evidence is evidence that acts as virtual proof that the invention involved an inventive step. That is, it provides a basis from which it can be inferred that the invention is non-obvious.
While supporters of secondary evidence argue that it makes decision making simpler and adds a degree of realism to the inquiry,154 there is a growing consensus of opinion against placing too much reliance on it.155 As Laddie J warned, secondary evidence ‘must not be permitted, by reason of its volume and complexity, to obscure the fact that it is no more than an aid in assessing the primary evidence’.156 The growing suspicion about secondary evidence may reflect the fact that, with the increased specialization of the patent courts, the judges are happier to make technical judgments.157 It also reflects a desire to keep the cost of patent litigation down, with secondary evidence seen as adding unnecessarily to the time and cost of litigation. With these general reservations in mind, we will now outline some of the forms of secondary evidence that have been used as proof of the non-obviousness of inventions.
5.3.1 Closeness to prior art
One factor that has been used to indicate that an invention is obvious is its proximity to the prior art. If, for example, an invention combines two documents from neighbouring fields, it is likely to be obvious. In a famous case, the Court of Appeal held that a design for a sausage machine that merely combined a better way of cutting sausages with an existing filler was obvious.158 It would be possible, however, for elements from different areas to be combined in a non-obvious way. Similarly, where a patent application is for a ‘new use’ that is analogous to the existing known uses of the thing, it is unlikely to be inventive. The use of a substance to reduce friction when it was already known that the substance operated as a rust inhibitor was held not to be analogous.159
5.3.2p. 597 Comparative efforts
The efforts of researchers working in the same field as the inventor have also been used as evidence to support non-obviousness.160 If a number of people working in the same field were pursuing the same goal, the fact that the inventor was the only person to solve the problem successfully might imply inventiveness. This is on the basis that the corresponding failure of others indicates that the solution was not obvious. On the other hand, if other researchers were to make the same invention shortly after the applicant, this might imply that the invention was obvious.161
The courts have emphasized that evidence of comparative effort should be treated with caution. In order to be of any value, the comparative inventors must have been working from the same prior art as that cited in the non-obviousness inquiry. They must have also been pursuing the same goal and working for some time. If different starting points were used, no inference can be drawn as to the obviousness of the invention from their relative activities. As Laddie J said, the fact that ‘a particular researcher working from an unpleaded piece of prior art, arrived at the invention in suit is of no assistance to the court’.162
5.3.3 Long-felt want
A related form of evidence that is used to support claims for inventive step is evidence that the invention satisfies a ‘long-felt want’. The logic of this is straightforward: if people had been trying to solve a particular problem for many years and the solution had been obvious, someone would already have invented it.163 Given the existence of a long-felt want, the fact that no one had previously developed the invention means that the invention must have been non-obvious. While long-felt want may indicate inventiveness, there might be other reasons why a development was not made earlier.164 As such, it is necessary to be careful when inferring non-obviousness from a long-felt want: the need must have been known about for some time; there must have been an interest in developing the field; and the materials and information that form the basis of the solution must have been known and available.165
5.3.4 Commercial success
In some situations, the fate of an invention after grant may provide evidence that suggests that the invention is non-obvious. For example, if an invention proves to be commercially successful or is widely copied by or licensed to competitors, it might be inferred that the invention involved a leap beyond what previously existed. As Tomlin J said in Parkes v. Cocker:
When it has been found that the problem had awaited solution for many years and that the device is in fact novel and superior to what had gone before and has been widely used and indeed in preference to alternative devices, it is practically impossible to say that there is not present that scintilla of invention necessary to support the patent.166
p. 598↵Evidence about the fate of an invention after grant that is introduced to prove inventive step needs to be treated with caution.167 This is because there may be a number of reasons other than the non-obvious nature of an invention that explain the reaction of the market or competitors to the invention. For example, a competitor might have taken out a licence from a patentee to avoid threats of litigation, rather than because they regarded the patentee’s invention as based on a significant technical advance. Similarly, commercial success might be attributable to factors such as advertising, distribution, marketing, or business acumen rather than to technical advance. For evidence of the fate of an invention after grant to be of value, it must suggest a link between the success of the product and the product’s patented features.168 As a result, commercial success will rarely be of significance unless it can be shown that there is evidence of a previous need for a solution to the particular problem, that the relevant prior art had been published for some time, and, most importantly, that the commercial success was attributable to the technical features of the invention.169 It has also been suggested that the ability to rely on commercial success depends on being able to isolate what it is that has contributed to the success. As such, it has been suggested that commercial success would only ever be applicable for simple inventions.170
5.3.5 The belief and conduct of the inventor
While the factual nature of the obviousness inquiry, which requires the court to pass judgment on the relative ‘inventiveness’ of the patent, may seem to suggest that the views of the inventor would be critical, as Jacob LJ said, such evidence is at best secondary evidence, which must be kept firmly in place. This helps to protect against the inventor who ‘may have thought that what he did was little short of, or actually [was], a work of genius—that he was a latter-day Edison’.171
Notes
1 PA 1977, s. 1(1)(b); EPC 2000, Art. 52(1) (ex EPC 1973, Art. 52(1)); PCT, Art. 33(3); TRIPS, Art. 27(1). See generally, J. Bochnovic, The Inventive Step (1982); H. Ullrich, Standards of Patentability for European Inventions (1977).
2 PA 1977, s. 3; EPC 2000, Art. 56 (ex EPC 1973, Art. 52(1)).
3 However, a useful proposal (such as the idea to cover an umbrella with water-soluble textile) might be non-obvious, but lack inventive step: R. Singer, The European Patent Convention (1995), 181, n. 1; Exxon/Gelation, T 119/82 [1984] OJ EPO 217.
4 Pension Benefits Systems Partnership/Controlling pension benefits systems, T 931/95 [2001] OJ EPO 413.
5 Harries v. Air King 183 F.2d. 158, 162 (1950) (Judge Learned Hand). For the position in the United States, see KSR International v. Teleflex, 558 US 398 (2007).
6 This ‘contributes significantly both to the insecure commercial value of many patents and to the cost of litigating their validity’: W. Cornish, ‘The Essential Criteria for Patentability’ (1983) 14 IIC 765, 771.
7 H. Ullrich, Standards of Patentability (1977), 37; J. Schmidt-Szalewski, ‘Non-obviousness as a Requirement of Patentability in French Law’ (1992) 23 IIC 725, 737.
8 While there has been a shift in the theoretical basis of the novelty requirement from a ‘right to work’ to an information-related understanding, such a shift has yet to be recognized in relation to inventive step.
9 Harwood v. Great Northern Railway Co. (1865) 11 HLC 654, 682 (Lord Westbury). See also Elias v. Grovesend (1890) 7 RPC 455, 467; Brugger v. Medic Aid [1996] RPC 635, 653; VDO Adolf Schindling/Illuminating device, T 324/94 [1997] EPOR 146, 153.
10 [1999] FSR 116, 136. See also Philips (Bosgra’s) Application [1974] RPC 241 (emphasizing right to work).
11 Actavis Group v. Actavis UK [2016] EWHC 1955 (Pat), [279]; Société Technique de Pulvérisation (STEP) v. Emson [1993] RPC 513. Cf. Mölnlycke v. Procter & Gamble (No. 5) [1994] RPC 49; H. Ullrich, Standards of Patentability (1997), 103.
12 G. Knesch, ‘Assessing Inventive Step in Examination and Opposition Proceedings at the EPO’ (1994) epi-Information 95, 98.
13 CIPA, [3.04].
14 This was espoused in the first published decision of the TBA, Bayer/Carbonless copying, T 1/80 [1979–85] B EPOR 250.
15 The problem-and-solution approach builds upon an image of research as an activity that sets out to solve particular problems: ICI/Containers, T 26/81 [1982] OJ EPO 211.
16 Comvik/Two identities, T 641/00 [2003] OJ EPO 319, [5].
17 T 465/92 [1995] EPOR 501.
18 For a general discussion of need to avoid hindsight, see Ferag v. Muller Martini [2007] EWCA Civ 15, [13].
19 Actavis v. Novartis [2010] EWHC Civ 82, [35]. The Court noted, however, that the problem-and-solution approach worked very well when there was no need to reformulate the problem: ibid., [39]. This was the case in Apimed Medical Honey v. Brightwake [2011] EWPCC 2, in which the problem was that honey was runny at room temperature and the purpose of the invention (solution) was to immobilize liquid honey in such a way that it could be maintained at a wound site to act as a therapeutic dressing.
20 Although these provisions are intended to be applied uniformly throughout the EPC states, inventive step appears to be an area in which British courts have taken little notice of EPC precedents and therefore an area in which harmonization seems at its most embryonic: Hallen v. Brabantia [1991] RPC 195, 212; Hoechst Celanese v. BP Chemicals [1997] FSR 547, 567, 572.
21 Windsurfing International v. Tabor Marine [1985] RPC 59 (CA), followed in Lux Traffic v. Pike Signals [1993] RPC 107; Hallen v. Brabantia [1991] RPC 195; Mannheim v. Genzyme [1993] FSR 716, 724; Mölnlycke v. Procter & Gamble (No. 5) [1994] RPC 49, 115; PLG Research [1995] FSR 116; A. Griffiths, ‘Windsurfing and the Inventive Step’ [1999] IPQ 160.
22 For criticism, see J. Claydon, ‘The Question of Obviousness in the Windsurfer decision’ [1985] EIPR 218. See Unilever v. Chefaro [1994] RPC 567, 580.
23 Pozzoli SpA v. BDMO SA [2007] EWCA Civ 588.
24 Ibid., [15]–[19]. For further elaboration, see Jacob LJ in Nichia Corporation v. Argos [2007] EWCA Civ 741, [12].
25 See, e.g., Regeneron Pharmaceuticals v. Genentech [2013] EWCA Civ 93, [68]–[71]; Conor v. Angiotech [2008] RPC 28 (HL), [42]; Generics (UK) v. Daiichi Pharmaceutical Co. [2009] EWCA Civ 646, [17]; Medimmune v. Novartis [2012] EWCA Civ 1234, [34], [177]–[186].
26 ‘[A]ttempts to force all questions of obviousness into a “problem-solution” approach can lead to trouble, though often the test can be a helpful guide’: Nichia Corporation v. Argos [2007] EWCA Civ 741, [22]. Jacob LJ also noted that a similar view has been taken by the US Supreme Court in KSR International v. Teleflex, 550 US 398 (2007). See also A. White, ‘The Problem-and-solution Approach to Obviousness’ [1986] EIPR 387; J. Beton, ‘Vote of thanks to G. Szabo’ (1987) 16 CIPAJ 361.
27 R. Singer, The European Patent Convention (1995), 186; Grehal/Shear, T 305/87 [1991] EPOR 389.
28 F. Hagel and C. Menes, ‘Making Proper Use of the Problem–solution Approach’ [1995] epi-Information 14.
29 Rider/Simethicone tablet, T 2/83 [1979–85] C EPOR 715.
30 F. Hagel and C. Menes, ‘Making Proper Use of the Problem–solution Approach’ [1995] epi-Information 14, 16.
31 P. Cole, ‘Inventive Step: Meaning of the EPO Problem and Solutions Approach and Implications of the United Kingdom’ [1998] EIPR 214, 271.
32 CIPA, [3.04]. Descriptions in UK patents often begin by setting out the background of the invention and then explain the particular problem that the invention solves.
33 See P. Cole, ‘Inventive Step: Meaning of the EPO Problem and Solutions Approach and Implications of the United Kingdom’ [1998] EIPR 214; Sharp and Dohme v. Boots Pure Drug Company (1928) 45 RPC 153, 173 (Sir Stafford Cripps); J. Beton, ‘Vote of thanks to G. Szabo’ (1987) 16 CIPAJ 361; S. Avery, ‘Problem and Solution at the EPO: The Primary Consideration’ (1984–85) 14 CIPAJ 166; G. Szabo, ‘Questions on the Problem-and-solution Approach to the Inventive Step’ (1986–87) 16 CIPAJ 351.
34 See Haberman v. Jackel International [1999] FSR 683, 683, 699–700; Dyson Appliances v. Hoover [2001] RPC 26, [153].
35 [1997] RPC 1, 45.
36 Described as ‘an assembly of nerds with different basic skills, all unimaginative’: Rockwater v. Technip [2004] RPC (46) 919, [7], [10], and as ‘a normative legal construct’: Positec Power Tools v. Husqvarna [2016] EWHC 1061 (Pat), [8]. For early accounts, see J. Bochnovic, The Inventive Step (1982), 59; J. Pagenberg, ‘The Evaluation of the “Inventive Step” in the European Patent System’ (1978) 9 IIC 1, 16–17; J. Tresansky, ‘PHOSITA: The Ubiquitous and Enigmatic Person in Patent Law’ (1991) 73 JPTOS 37.
37 Technograph Printed Circuits v. Mills & Rockley (Electronics) [1972] RPC 346, 355 (Lord Reid); Polymer Powders/Allied colloids, T 39/93 [1997] OJ EPO 134, 149. The person skilled in the art is not necessarily the same person skilled in the art for performing an invention when it is made: Schlumberger Holdings Ltd v. Electromagnetic Geoservices AS [2010] EWCA Civ 819, [61].
38 Positec Power Tools v. Husqvarna [2016] EWHC 1061 (Pat), [8]. Citing Teva v. Leo [2015] EWCA Civ 779, [29] (CA) (which, giving the example of the ‘bag-ridden’ mindset of real vacuum cleaner designers in Dysan v. Hoover [2002] RPC 465, suggested that the skilled person ‘includes the real prejudices and practices of persons skilled in the art’).
39 Hoechst Celanese v. BP Chemicals [1997] FSR 547, 565; BASF/Metal refining, T 24/81 [1979–85] B EPOR 354.
40 For a summary of some of the attributes of the person skilled in the art, see Jacob LJ in Rockwater v. Technip [2004] RPC 919, [6]–[12].
41 Genentech’s Patents [1989] RPC 147, 278 (Mustill LJ).
42 EPC 2000 Regs, rr 42(1)(a), 47(2) (ex EPC 1973 Regs, rr 27(1)(a), 33(2)); Luminescent Security Fibres/Jalon, T 422/93 [1997] OJ EPO 24.
43 Comvik/Two identities, T 641/00 [2003] OJ EPO 319, [vi].
44 ‘The inventor’s merits resided in realizing the economical and administrative problem for certain subscribers that distribution costs for various categories of calls within one and the same subscription causes extra work’: ibid., [vi].
45 Ibid., [7] (ingenuity of the invention occurred in non-technical fields, which could not contribute to inventive step).
46 Pension Benefits Systems, T 931/95 [2001] OJ EPO 413 (assessment for inventive step was to be carried out from the point of view of a software developer or application programmer).
47 Genentech’s Patent [1989] RPC 147, 241.
48 Dredge v. Parnell (1899) 16 RPC 625, 628; cf. Genentech’s Patent [1989] RPC 147, 214.
49 Genentech’s Patent [1989] RPC 147, 278; Adolf Schindling/Illuminating device, T 324/94 [1997] EPOR 146.
50 This has been questioned in relation to the field of biotechnology: Genentech’s Patent [1989] RPC 147, 214, 279–280. See also Technograph Printed Circuit [1972] RPC 346; Polymer Powders/Allied colloids, T 39/93 [1997] OJ EPO 134, 149.
51 Genentech/Expression in yeast, T 445/91 [1995] OJ EPO 684.
52 This date might be critical. For example, in Biogen v. Medeva [1995] RPC 25 (CA), it was acknowledged that, because recombinant DNA technology had developed so quickly, the invention would have been obvious by December 1979. As such, it was critical whether Biogen could take advantage of an earlier priority date from December 1978.
53 See Chapter 18, sections 2 and 3, p. 553. On the approach the courts take when considering an order for disclosure of documents in an obviousness case, see Positec Power Tools v. Husqvarna [2016] EWHC 1061 (Pat), [7]–[43] (refusing to order disclosure).
54 BASF/Metal refining, T 24/81 [1979–85] EPOR B–354.
55 Phillip Morris/Tobacco lamina filler, T 323/90 [1996] EPOR 422, 430.
56 Technograph v. Mills & Rockley [1972] RPC 346, 355.
57 Mobay/Nethylenebis, T 2/81 [1982] OJ EPO 394. See also Discovision/Optical recording, T 239/85 [1997] EPOR 171.
58 Blaschim/rearrangement reaction, T 597/92 [1996] EPOR 456; Mitsoboshi/Endless power transmission, T 169/84 [1979–85] B EPOR 354; Hoechst Celanese v. BP [1997] FSR 547, 563.
59 PLG Research [1994] FSR 116, 137 (‘Knowing of a piece of prior art is one thing; appreciating its significance to the solution to the problem in hand is another’).
60 Cf. Brugger v. Medic Aid [1996] RPC 635, 653 (the ‘court should be wary of uncritical ageism in relation to prior art … The fact that a document is old does not, per se, mean that it cannot be a basis for an obviousness attack’).
61 T 176/84 [1986] OJ EPO 50.
62 Kereber/Wire link bands, T 28/87 [1989] OJ EPO 383. Mobius was distinguished in Boeing/General technical knowledge, T 195/84 [1986] OJ EPO 121.
63 Hoechst Celanese v. BP Chemicals [1997] FSR 547, 563; British Ore Concentration Syndicate v. Mineral Separation (1909) 26 RPC 124, 138. For a general discussion, see KCI Licensing v. Smith & Nephew [2010] FSR 740, [105]–[121].
64 Sometimes, information may fail to ground an invalidity attack when viewed as part of the prior art, but succeed in so doing once categorized as common general knowledge: Boeing/General technical knowledge, T 195/84 [1986] OJ EPO 121.
65 To qualify as art of the common general knowledge, a fact must be ‘generally known within the relevant art and not merely known to some people but not others’; in addition, ‘requirements of quality and reliability must be satisfied’: Omnipharm v. Merial [2011] EWHC 3393 (Pat). On this, see CIPA, [3.11].
66 Generics (UK) v. Warner-Lambert [2015] EWHC 2548 (Pat), [125]. See also Accord Healthcare v. Medac Gesellschaft [2016] EWHC 24 (Pat), [119].
67 Generics (UK) v. Warner-Lambert [2015] EWHC 2548 (Pat), [124] (‘the position may be different if all the persons skilled in a particular art in the UK are acquainted with the position in China’. Ibid).
68 Beloit v. Valmet [1997] RPC 489, 494.
69 Mars II/Glucomannan, T 112/92 [1994] EPOR 249.
70 See General Tire and Rubber v. Firestone Tyre & Rubber [1972] RPC 457, 482.
71 British Acoustic Films v. Nettlefordfold Productions (1936) 53 RPC 221, 250.
72 Beloit v. Valmet [1997] RPC 489, 494.
73 Accord Healthcare v. Medac Gesellschaft [2016] EWHC 24 (Pat), [121].
74 Ibid., [123]. For the ramifications this has for the way obviousness actions are pleaded, see Meter-Tech v. British Gas [2016] EWHC 2278 (Pat), [27]–[29]; Unwired Planet International v. Huawei Technologies [2016] EWHC 576 (Pat), [233].
75 Windsurfing International [1985] RPC 59. The importance of the way in which an invention is interpreted is illustrated in Genentech’s Patents [1989] RPC 147. See also B. Reid, ‘Biogen in the EPO: The Advantage of Scientific Understanding’ [2005] EIPR 98.
76 SABAF SpA v. MFI Furniture Centres [2005] RPC 209 (HL), [24]. In particular, it was necessary to decide whether you were dealing with one or two or more inventions. The House of Lords said that it was not appropriate to combine separate inventions and then ask whether the combination would have been obvious: ibid., [28].
77 The problem that the applicant is required to specify should be a technical as opposed to a commercial one: Esswein/Automatic programmer, T 579/88 [1991] EPOR 120.
78 EPC 2000 Regs, rr 42(1)(c), 47 (ex EPC 1973 Regs, rr 27(1)(c)], 33(2)).
79 The problem might need to be reformulated in the light of information revealed by the search report, or the documents relied upon in opposition or appeal proceedings, if these represent a closer state of the art than that originally mentioned. Similarly, the technical problem might need to be reformulated in light of experiments that reveal that the claim is too broad: Polymer Powders/Allied colloids, T 39/93 [1997] OJ EPO 134, 144 ff.
80 Phillips Petroleum/Passivation of catalyst, T 155/85 [1988] EPOR 164, 169; Sperry/Reformulation of the problem, T 13/84 [1986] EPOR 289.
81 IBM/Enclosure for data-processing apparatus, T 9/82 [1997] EPOR 303; Bayer/Thermoplastic moulding composition, T 68/83 [1979–85] C EPOR 71; G. Knesch, ‘Assessing Inventive Step in Examination and Opposition Proceedings at the EPO’ (1994) epi-Information 95 (‘the crucial question is whether the man skilled in the art would really have chosen that document as the starting point’).
82 Pegulan/Surface finish, T 495/91 [1995] EPOR 517.
83 CIPA, [3.21].
84 Cf. Generics (UK) v. Daiichi Pharmaceutical Co. [2009] EWCA Civ 646, [17]–[21]. Interestingly, CIPA, [3.04], suggests that much of the controversy in the United Kingdom in relation to the problem-and-solution approach is because of a misunderstanding: in the United Kingdom, it is generally understood to refer to a real-world problem; at the EPO, it usually relates to an artificially constructed problem.
85 Brugger v. Medic Aid [1996] RPC 635, 656 (the inventive concept must be characterized in light of the claims and must apply to all embodiments in the claim). For a discussion as to how the invention is determined see Chapter 22, section 3.1, p. 656.
86 [1997] RPC 1, 45. Lord Hoffmann identified the ‘inventive concept’ differently at different stages of his analysis.
87 [2004] EWHC 477, [43]–[45].
88 [2009] EWCA Civ 646.
89 Ibid., [20].
90 Kock & Sterzel/X-ray apparatus, T 26/86 [1988] OJ EPO 19.
91 Non-technical meaning ‘features relating to non-inventions within the meaning of Article 52(2)’: Comvik/Two identities, T 641/00 [2003] OJ EPO 319, [4].
92 Ibid., [7], following Pension Benefits Systems, T 931/95 [2001] OJ EPO 413.
93 Hitachi/Auction method, T 258/03 [2004] OJ EPO 575, 583, 588; Man/Provision of product-specific data, T 1242/04 [2007] OJ EPO 421, 430.
94 Aerotel v. Telco Holdings [2007] 1 All ER 225, [27], [105]–[106], Pozzoli [2007] EWCA Civ 588, [21].
95 Where the problem-and-solution approach is followed, this question becomes whether the solution that an invention provides to the problem being addressed would have been obvious to the person skilled in the art.
96 UK IPO, Examining Patent Applications for Biotechnological Inventions (21 October 2016), [35].
97 Hoechst Celanese v. BP [1997] FSR 547, 563; British Westinghouse v. Braulik (1910) 27 RPC 209 (Fletcher Moulton LJ); Brugger v. Medic Aid [1996] RPC 635, 661.
98 While the Windsurfing decision and the ‘problem-and-solution approach’ provide guidance as to how the invention is to be interpreted, they provide no assistance in determining whether an invention is obvious.
99 UK IPO, Examining Patent Applications relating to Chemical Inventions (5 June 2017), [41].
100 Or, in some cases, they may cover a trillion compounds. See Idenix Pharmaceuticals v. Gilead Sciences [2014] EWHC 3916 (Pat), [444].
101 Actavis Group v. Eli Lilly [2015] EWHC 3294 (Pat), [177]–[178].
102 Ibid.
103 Human Genome Services v. Eli Lilly [2011] UKSC 5.
104 Actavis Group v. Eli Lilly [2015] EWHC 3294 (Pat), [177].
105 Idenix Pharmaceuticals v. Gilead Sciences [2016] EWCA Civ 1089, [111] (CA).
106 Glaxosmithkline v. Wyeth Holdings [2016] EWHC 1045, [94]; Actavis Group v. Eli Lilly [2015] EWHC 3294 (Pat), [177]–[178]. For discussion, see Paul England, ‘Patents and Plausibility’ (2014) 9 JIPLP 22.
107 John Manville’s Patent [1967] RPC 479, 493 (Diplock LJ). Singer suggests 13 subtests: R. Singer, The European Patent Convention (1995), 182–3.
108 The inquiry was said to be based on myriad factors, which ‘divide broadly into matters technical and matters historical’: Saint-Gobain Pam SA v. Fusion Provida [2004] All ER (D) 44, [19].
109 Rider/Simethicone tablet, T 2/83 [1984] OJ EPO 265, [6]. See also Hallen v. Brabantia [1991] RPC 195 (CA).
110 For a discussion of ‘obvious to try’, see Medimmune v. Novartis [2013] RPC 659, [90]-[95].
111 Olin Mathieson v. Biorex [1970] RPC 157.
112 It has been suggested that proving obviousness by showing a technical contribution to the art is inherent in the problem-and-solution approach adopted at the EPO. Idenix Pharmaceuticals v. Gilead Sciences [2014] EWHC 3916 (Pat), [104]–[105]; Generics (UK) v. Yeda Research and Development [2013] EWCA Civ 925 (CA).
113 Tevea v. Leo [2015] EWCA 779 (CA) (when considering whether something was obvious to try, it was important to take account of the expectations of the skilled person). For a useful discussion of the dangers of applying judicial tests (such as ‘obvious to try’) to determine obviousness, see: Hospira v. Genentech [2016] EWCA Civ 780, [9]–[17] (CA).
114 EPO Guidelines, G-VII, [4].
115 Atlantic Works v. Brady, 107 US 192 (1883) (Justice Bradley).
116 Richardson Vicks Patent [1995] RPC 568, 579–80.
117 Genentech’s Patent [1989] RPC 147 (CA), 237 (Mustill LJ).
118 Pension Benefits Systems, T 931/95 [2001] OJ EPO 413, [7].
119 Wiederhold/Two component polyurethane lacquer, T 259/85 [1988] EPOR 209; Medtronic/Defibrillator, T 348/86 [1988] EPOR 159; American Cyanamid (Dann’s) Patent [1971] RPC 425, 451.
120 Ward Building v. Hodgson, C/47/97 (23 May 1997), unreported (Robert Walker J).
121 If ‘the intellectual horizon of practical research and innovation is in part set by the economic milieu, commercial realities cannot necessarily be divorced from the kinds of practical outcome which might occur to the law’s skilled addressee as potentially worthwhile’: Dyson Appliances v. Hoover [2002] RPC 465 (CA), 493 (Sedley LJ); see also Arden LJ at 494–5. Applied by Aldous LJ in Panduit v. Band-It [2002] EWCA Civ 465, [49].
122 For discussions focusing on biotechnological inventions, see EPO/USPTO/JPO, Trilateral Project 24.1: Biotechnology Comparative Study on Biotechnology Patent Practice—Comparative Study Report (2001); D. Schertenleib, ‘The Patentability and Protection of DNA-based Inventions in the EPO and the European Union’ [2003] EIPR 125; UK IPO, Examining Patent Applications for Biotechnological Inventions (21 October 2016), [25]–[57].
123 Rider/Simethicone tablet, T 2/83 [1984] OJ EPO 265; Genentech/Expression in yeast, T 455/91 [1996] EPOR 85.
124 American Cyanamid v. Ethicon [1979] RPC 215, 266–7.
125 [1996] RPC 635, 661.
126 VDO Adolf Schindling/Illuminating device, T 324/94 [1997] EPOR 146. The number of alternative routes may be relevant, for if there is only one route, then even an unexpected result might be treated as being obvious: Rider/Simethicone, T 2/83 [1984] OJ EPO 265.
127 Brugger v. Medic Aid [1996] RPC 635, 660.
128 Olin v. Mathieson Biorex [1970] RPC 157, 187.
129 [1967] RPC 479, followed under the 1977 Act in Brugger v. Medic Aid [1996] RPC 635, 661. See also Chiron Corporation v. Murex Diagnostics [1996] RPC 535, 557.
130 DMS/Astaxanthin, T 737/96 [2000] EPOR 557, [11]. Patentees argued that there was no reasonable expectation of achieving the solution offered by the patent. The Board rejected this test because it was not possible to make reasonable predictions about the possibility of success since the success of the invention depended on chance events (mutagenesis).
131 A distinction is drawn between an exercise of ingenuity and a voyage of discovery: see Beechams Group (Amoxycillin) Application [1980] RPC 261 (CA) (Buckley LJ).
132 Genentech/Expression in yeast, T 455/91 [1995] OJ EPO 684.
133 J. Schmidt-Szalewski, ‘Non-obviousness as a Requirement of Patentability in French Law’ (1992) 23 IIC 725, 735–6.
134 If a particular route has not been considered for commercial reason, such a prejudice is irrelevant: see Brugger v. Medic Aid [1996] RPC 635.
135 EPO Guidelines, G-VII, [4]. See also Mobay/Nethylenebis, T 2/81 [1982] OJ EPO 394 (documents revealed a prejudice or general trend pointing away from the invention).
136 Ancare New Zealand Ltd’s Patent [2003] RPC 139, 143 (Lord Hoffmann); [2002] UKPC 8 (PC).
137 [1997] RPC 1. See also Hoechst Celanese v. BP [1997] FSR 547.
138 Raleigh Cycle v. Miller (1946) 63 RPC 113; Phillips Petroleum/Passivation of catalyst, T 155/85 [1989] EPOR 164.
139 John Manville’s Patent [1967] RPC 479.
140 Unilever/Chymosin, T 386/94 [1997] EPOR 184, 194.
141 Genentech’s Patent [1989] RPC 147 (CA), 276.
142 Buckley LJ said ‘it will suffice if it is shown that it would appear to anyone skilled in the art but lacking in inventive capacity that to try the step or process would be worthwhile … Worthwhile to what end? It must, in my opinion, be shown to be worth trying in order to solve some recognized problem or meet some recognized need’: Beecham/Amoxycillin [1980] RPC 261, 290–1. For a discussion of the approach to take to ‘obvious to try’, see Medimmune v. Norvartis Pharmaceuticals [2012] EWCA Civ 1234, [90]–[93].
143 Rider/Simethicone, T 2/83 [1984] OJ EPO 265. With problem inventions, dangers of hindsight are particularly pronounced: Bonzel v. Intervention (No. 3) [1991] RPC 553.
144 T 195/84 [1986] OJ EPO 121.
145 Rider/Simethicone, T 2/83 [1984] OJ EPO 265. The discovery of an as-yet-unrecognized problem may give rise to patentable subject matter and, as an unexpected bonus, might be interpreted as a solution of an as-yet-unknown problem.
146 Omnipharm v. Merial [2011] EWHC 3393 (Pat).
147 (1930) 47 RPC 289.
148 Dr Reddy’s Laboratories (UK) v. Eli Lilly [2009] EWCA 1362, [40]–[60].
149 Agrevo/Triazoles, T 939/92 [1996] OJ EPO 309; Wyeth/Dopamine agonists, T 133/01 (30 September 2003) (a selection would be obvious if it did not make a real technical advance).
150 Generics (UK) v. Yeda Research and Teva Pharmaceutical Industries [2013] EWCA Civ 925, [49].
151 UK IPO, Manual of Patent Practice, [3.91].
152 UK IPO, Examining Patent Applications relating to Chemical Inventions (5 June 2017), [80].
153 See J. Bochnovic, The Inventive Step (1982), 70; Singer, The European Patent Convention (1995), 196–205.
154 See J. Pagenberg, ‘The Evaluation of the “Inventive Step” in the European Patent System: More Objective Standards Needed’ (1978) 9 IIC 1, 13; J. Pagenberg, ‘Different Level of Inventive Step for German and European Patents? The Present Practice of Nullity Proceedings in Germany’ (1991) 22 IIC 763, 764; E. Kitch, ‘The Nature and Function of the Patent System’ (1977) 20 J L & Econ 265, 283.
155 Glaverbel SA v. British Coal [1995] RPC 255; Hoechst Celanese v. BP [1997] FSR 547, 566; R. Merges, ‘Commercial Innovation and Patent Standards’ (1988) 76 Cal L Rev 805.
156 Hoechst Celanese v. BP [1997] FSR 547, 563, echoing Mölnlycke v. Procter & Gamble (No. 5) [1994] RPC 49.
157 Cf. A. Cambrosio, P. Keating, and M. MacKenzie, ‘Scientific Practice in the Courtroom’ (1990) 37 Soc Probs 275.
158 Williams v. Nye (1890) 7 RPC 62; J. Bochnovic, The Inventive Step (1982), 76–8; Man/Intermediate layer for reflector, T 6/80 [1979–85] B EPOR 266.
159 Mobil/Friction reducing additive, T 59/87 [1990] EPOR 514; Mars II/Glucomannan, T 112/92 [1994] EPOR 249.
160 Lucas v. Gaedor [1978] RPC 297; Fichera v. Flogates [1984] RPC 227; Chiron v. Organon (No. 3) [1994] FSR 202; Mölnlycke v. Procter & Gamble (No. 5) [1994] RPC 49; General Tire v. Firestone Tyre [1976] RPC 197 (HL), 203.
161 Windsurfing International [1985] RPC 59, 73–4; Beloit Technologies [1995] RPC 705, 753; Genentech’s Patent [1989] RPC 147, 221.
162 Hoechst Celanese v. BP [1997] FSR 547, 565.
163 See Teva UK v. Leo Pharma [2015] EWCA Civ 779; Brugger v. Medic Aid [1996] RPC 635, 654; Frisco-Findus/Frozen fish, T 90/89 [1991] EPOR 42; Air Products/Removal of hydrogen sulphide, T 271/84 [1987] OJ EPO 405, [1987] EPOR 23.
164 Brugger v. Medic Aid [1996] RPC 635, 654–5.
165 BASF/Metal Refining [1979–85] B EPOR 354; VDO Adolf Schindling/Illuminating device, T 324/94 [1997] EPOR 146.
166 (1929) 46 RPC 241, 248.
167 Longbottom v. Shaw (1891) 8 RPC 333, 336; ICI/Fusecord, T 270/84 [1987] EPOR 357; EPO Guidelines, G-VI, [10.2].
168 R. Merges, ‘Commercial Innovation and Patent Standards’ (1988) 76 Cal L Rev 805; E. Walker, ‘Objective Evidence of Non-obviousness: The Elusive Nexus Requirement’ (1987) 69 JPTOS 175, 236; Comment, ‘Non-obviousness in Patent Law: A Question of Law or Fact’ (1977) 18 WMLR 612.
169 EPO Guidelines, G-VI, [10.3]; Raychem’s Patent [1998] RPC 31.
170 See Haberman v. Jackel [1999] FSR 683 (the ‘AnyWayUpCup’); Conor Medsystems v. Angiotech Pharmaceuticals [2007] RPC 487, [51]–[52]. The patent at issue in this decision can be examined on the Online Resources, http://www.oxfordtextbooks.co.uk/bently_sherman5e/.
171 Nichia Corporation v. Argos [2007] EWCA Civ 741, [13]–[43].
