GovWire

3.03

What constitutes an inventive step may depend on the nature of the invention. The matter was considered by Lord Hoffmann in Biogen Inc v Medeva plc [1997] RPC 1 (at page 34) as follows:

Whenever anything inventive is done for the first time it is the result of the addition of a new idea to the existing stock of knowledge. Sometimes, it is the idea of using established techniques to do something which no one had previously thought of doing. In that case the inventive idea will be doing the new thing. Sometimes it is finding a way of doing something which people had wanted to do but could not think how. The inventive idea would be the way of achieving the goal. In yet other cases, many people may have a general idea of how they might achieve a goal but not know how to solve a particular problem which stands in their way. If someone devises a way of solving the problem, his inventive step will be that solution, but not the goal itself or the general method of achieving it.

3.04

EPC aa.52& 56 is also relevant

The test for obviousness should, as far as is possible, be an objective one. The question is whether the invention would have been obvious to a skilled person in the art, and not whether it was or would have been obvious to the inventor or to some other particular worker. It is immaterial whether the invention was the result of independent work and research done without knowledge of the prior art (Allmanna Svenska Elektriska AB v The Burntisland Shipbuilding Co Ltd, 69 RPC 63 at page 70). Although evidence of what was in the inventors mind may be admissible as evidence of the state of the art, it would seldom be otherwise admissible (The Wellcome Foundation v VR Laboratories (Australia) Pty. Ltd, [1982] RPC 343). The EPO Board of Appeal has held that the subjective achievement of the inventor is not relevant; the fact that an invention relating to steel refining came, not from the steel industry, but from an applicant who normally deals with other fields of technology is not evidence for the existence of an inventive step (Decisions T36/82, OJEPO 7/83).

3.05

In the judgment of the Court of Appeal in Windsurfing International Inc. v Tabur Marine (Great Britain) Ltd, [1985] RPC 59 (in considering whether claims relating to a sailboard were obvious) it was stated that:

the question of whether the alleged invention was obvious has to be answered objectively by reference to whether, at the material time (that is, immediately prior to the priority date), the allegedly inventive step or concept would have been obvious to a skilled addressee and that what has to be determined is whether what is now claimed as inventive would have been obvious, not whether it would have appeared commercially worthwhile to exploit it

3.06

In Molnlycke AB v Procter & Gamble Ltd [1994] RPC 49 the Court of Appeal recognised the usefulness of the analysis formulated in Windsurfing but did not consider that it assisted to ask whether the patent discloses something sufficiently inventive to deserve the grant of a monopoly. The criterion for deciding the issue of inventive step as laid down by statute was held to be a wholly objective qualitative and not quantitative test.

3.07

The Court of Appeal followed Windsurfing in Hallen Co v Brabantia (UK) Ltd [1991] RPC 195, observing that obvious in s.3 is not directed to whether an advance is commercially obvious and stating:

We do not think that the hypothetical technician must also be taken as applying his mind to the commercial consequences which might follow if the step or process in question were found in practice to achieve or assist the objective which he had in view.

However the Court of Appeal has more recently appeared to retreat from this position, stating in Dyson Appliances Ltd v Hoover Ltd [2002] RPC 22 that:

commercial realities cannot necessarily be divorced from the kinds of practical outcome which might occur to the skilled addressee as worthwhile

and so it followed that a:

commercial mindset will have played a part in setting the notional skilled addressees mental horizon

3.08

In Petra Fischers Application [1997] RPC 899 it was held that a diesel cabriolet was obvious even though there may be commercial prejudice against the idea; Jacob J stated that:

The patentee in her patent has told the skilled man nothing which he did not know before, to whit, that in the engine space of a basic production model he could put a diesel engine, if he wanted to. Whether it was worth doing that or not is another matter. Whether he thinks it will sell or not, that is another matter

3.09

It is also unsound to fasten on the word step and to look at the steps which were actually taken by the inventor; this interpretation places too much weight on the choice of the particular word step whereas the word used in the French and German texts of the corresponding provisions of the European Patent Convention means activity (judgment of Court of Appeal in Genentech Incs Patent [1989] RPC 147 at page 275). It is necessary to ask by what routes it would have been possible for the skilled person to proceed to the goal (ie the invention) from the starting point, considering how obstacles might be overcome or avoided on any such route, not only that followed by the inventor.