Recent Developments in the UK re Inventive Step

Recent Developments in the UK re Inventive Step Presentation to ASPA 6th April 2011 Tibor Gold MBE, Fellow CIPA, Tutor, IP Academy, SG, Patent Practice Course

Legislation • SG Patents Act, s.15 • UK Patents Act, s.3 • EPC, Article 56 • An invention shall be taken to involve an inventive step if it is not obvious to a person skilled in the art [“POSITA”] having regard to any matter which forms part of the state of the art…

Structured approach • SG =Windsurfer (1985) • UK = Pozzoli (2007) reformulated the Windsurfer questions into a ‘more logical’ sequence • EPO approach – Problem-solution • BUT repeated judicial warnings that these are convenient tools but no more: the essential question is in the words of the statutory text, see Generics v Daiichi (2008)

The basic question • Per Kitchin J in Generics v Lundbeck(2007) approved by Lord Hoffmann in Conor v Angiotech(2008): The question of obviousness must be considered on the facts of each case. The court must consider the weight to be attached to any particular factor in the light of all the relevant circumstances. These may include such matters as – • - the motive to find a solution to the problem… • - the number and extent of the possible avenues of research • - the effort involved in pursuing them, and • - the expectation of success

The POSITA • An individual or a team • Does the notional skilled team include a POSITA in a second discipline? • Schlumberger v Electromagnetic Geoservices(2009) CA, on its way to the Supreme Court (ex-HL) – controversial - harking back to Dydon v Hoover (2002) • Per Jacob LJ: there could be different teams for different purposes (i.e. obviousness and sufficiency) PROVIDED THAT the invention is itself art-changing by putting together disparate arts

Common general knowledge • Generics v Daiichi • There may be material which the POSITA won’t carry in his head but knows where to find – this material should only be taken to be known to him if he has a particular reason for referring to it. • (E.g. he knows there are tables of coefficients of thermal expansion and he would consult them but not if it was not apparent that coefficients mattered)

Common general knowledge • A bit of a bombshell by Jacob LJ in Virgin Atlantic v Premium Aircraft (2009): • How much of the law and practice of the patent system is the skilled reader supposed to know and thus take into account when he is trying to work out what, by the words of his claim, the patentee was intending to mean? • It was an EP with ref nos. in a two-part claim • There was a divisional application

Common general knowledge • Said the good lord Justice Jacob: • “We think it would unrealistic – indeed perverse – for the law to say that the notional skilled reader, probably with the benefit of skilled advice, would not know and take into account the explicit drafting conventions by which the patent and its claims were framed. Likewise when there is a reference to the patent being a divisional application, it would be perverse to work on the basis that the skilled man would not know what that means. A real skilled man reading a patent which, as in the case of the Patent, refers to "the parent application" would surely say "what's a parent application?" – and he would go on to ask a man who knows, probably a patent agent. “

‘Obvious to try’ • Floyd J in Conor: a product which is obvious to make may be inventive if it was not obvious to use for a particular purpose • The new ‘granddaddy’: Generics v Lundbeck (2009 HL) • Balancing factors of expectation of success, the number of available routes, cost of pursuing every avenue, effort involved

Could/would • The question put as ‘could the POSITA have arrived at the invention by adapting or modifying the closest prior art?’ is WRONG. • The true question is whether he would have done so in the hope of solving the objective technical problem or in expectation of some improvement or advantage, at the priority date • (Actavis v Novartis 2010)

Revival of secondary indicia • Commercial success • - traditionally viewed with scepticism, could be due to extraneous matters; but now coming back into vogue • Weigh up factors such as how long has problem existed, how widely know was it, what prior art attempts would be known to the POSITA, what alternative solutions existed, were there any discouraging factors to trying, how well was the patent received, what other patent applications were filed stimulated by the invention BUT to what extent was the success due to the TECHNICAL ADVANTAGES OF THE INVENTION

“If it is so obvious, why has it not been done before?” • Schlumberger: • CSEM technique had been available for 20 years – only useful in deeper water and requires specialist apparatus, and considerable improvement in computers and analytic methods over the 20 years • Closest prior art on oil exploration available for 9 years • Conclusion: The invention had been ‘obvious’ for too long for it really to have been obvious

Jacob LJ’s critique of the EPO’s PSA • The PSA does not cope well where the invention lies in • perceiving that there is a problem; or • Appreciating that a know problem, perhaps tolerated for years, can in fact be solved; or • Nor does it help to solve the 5-inch paradox:suppose a claim to a 5” plate is not known from the prior art. Hence it is N and has IS because there is no particular reason to choose that dimension. The absurd conclusion of the PSA is that such a claim is patentable. (Actavis v Novartis 2010)

The death of selection patents • Previous ‘granddaddy’: IG Farben(1930) – have to disclose advantage of selected member of a known class • Now: Dr Reddy’s v Eli Lilly (2009); the better aapproach is that of the EPO in T939/92 AGREVO/Triazoles – an individual member of a prior-published class is taken to be obvious if it is a random selection but NOT if it provided a real technical advance AND sufficient justification is provided for the advance to be credible

SG cases • Mühlbauernow published in Fleet Street reports • Comments on Windsurfer stimulating • Also on making sure that the appropriate level of abstraction is applied • Comments on overcoming technical prejudices • Interesting new case on IS and insufficiency in DienGhin Electronics v Khek Tai Ting

Any Questions? • THANK YOU FOR LISTENING AND SORRY I KEPT YOU FROM DINNER!

Recent Developments in the UK re Inventive Step