Compare and contrast the approach of the EPO versus the approach of the UK courts to the question of inventive step in patent law.
The concept of an inventive step is a cornerstone of patent law, serving as a critical threshold that must be met for an invention to be patentable. In essence, an invention must not only be new and useful but also sufficiently inventive, meaning it should not be obvious to a person skilled in the relevant field. The European Patent Office (EPO) and the United Kingdom (UK) courts both examine the question of inventive step, yet their approaches differ in various ways. This essay aims to compare and contrast the approach of the EPO with that of the UK courts, delving into the methodologies, principles, and case law that define their respective approaches.
The EPO follows a structured and systematic approach to determining the inventive step, primarily relying on the "problem-solution approach."
The problem-solution approach is the primary tool used by the EPO to assess whether an invention involves an inventive step. This method involves three main steps:
Identifying the Closest Prior Art: The first step is to identify the closest prior art, which is the most relevant existing knowledge or technology related to the invention. This serves as the starting point for assessing the inventive step.
Determining the Objective Technical Problem: The next step is to define the objective technical problem that the invention aims to solve. This problem is derived by comparing the closest prior art with the claimed invention.
Assessing the Solution: The final step is to evaluate whether the claimed invention, as a solution to the identified problem, would have been obvious to a person skilled in the art. If the solution is not obvious, the invention is deemed to involve an inventive step.
This approach is structured and systematic, reducing subjectivity in decision-making. For instance, in the case T 2/83 ("Simethicone Tablet/Cianotec"), the EPO applied the problem-solution approach to assess the inventive step, ultimately determining that the claimed invention was not obvious in light of the closest prior art.
The EPO also considers the technical contribution of an invention. An invention must contribute something new and non-obvious to the existing technical knowledge. This concept was emphasized in T 154/04 ("Estimating sales activity/DUNS LICENSING ASSOCIATES"), where the EPO highlighted that the inventive step must be based on a technical feature rather than merely an administrative or business-related aspect.
The UK courts adopt a different methodology for assessing the inventive step, focusing on a broader and more flexible approach.
The leading test for assessing inventive step in the UK is the Windsurfing/Pozzoli test. This test was originally established in Windsurfing International Inc. v Tabur Marine (Great Britain) Ltd [1985] RPC 59 and was later refined in Pozzoli SPA v BDMO SA [2007] EWCA Civ 588. The test consists of four steps:
Identifying the Skilled Person: The first step is to determine the characteristics of the notional person skilled in the art.
Identifying the Relevant Common General Knowledge: The second step involves identifying the common general knowledge that the skilled person would possess at the relevant date.
Identifying the Inventive Concept: The third step is to determine the inventive concept of the claimed invention or, if that cannot readily be done, to construe it.
Assessing Obviousness: The final step is to assess whether the differences between the prior art and the claimed invention constitute steps that would have been obvious to the skilled person, or whether they involve an inventive step.
The Windsurfing/Pozzoli test allows for more judicial discretion compared to the EPO's problem-solution approach. This flexibility is evident in the case Actavis Group PTC EHF v ICOS Corporation [2019] UKSC 15, where the UK Supreme Court assessed whether the claimed invention was obvious by considering the inventive concept and the steps taken by the skilled person.
In the UK, the "obvious to try" principle is also relevant in assessing inventive step. This principle suggests that if the claimed invention was obvious to try with a reasonable expectation of success, it may not involve an inventive step. The principle was explored in MedImmune Ltd v Novartis Pharmaceuticals UK Ltd [2012] EWCA Civ 1234, where the court held that an invention that was obvious to try may lack an inventive step if there was a reasonable expectation of success.
While both the EPO and the UK courts aim to assess the inventive step, their approaches reflect different legal traditions, leading to distinct outcomes in some cases.
The EPO’s problem-solution approach is highly structured, providing a clear and consistent framework for examiners and applicants. This structure reduces subjectivity and ensures a more predictable outcome. In contrast, the UK courts' Windsurfing/Pozzoli test is more flexible, allowing for a broader consideration of the inventive concept and the context in which the invention was made. This flexibility can lead to varying outcomes depending on the specific circumstances of each case.
The EPO places significant emphasis on the technical contribution of an invention, whereas the UK courts focus on the inventive concept. The EPO’s approach may result in a stricter assessment of inventive step, particularly in cases involving non-technical features. The UK courts, however, allow for a broader interpretation of what constitutes an inventive step, potentially granting patents for inventions that may not meet the EPO’s criteria.
The difference in approaches can be seen in cases such as Aerotel Ltd v Telco Holdings Ltd [2006] EWCA Civ 1371 in the UK, where the court granted a patent for a business method that may not have met the EPO’s strict requirements for technical contribution. Similarly, in the EPO case T 641/00 (Two identities/COMVIK), the board of appeal emphasized the need for a technical contribution, leading to a refusal of a patent that might have been granted under the UK’s more flexible approach.
The approaches of the EPO and the UK courts to the question of inventive step in patent law reveal fundamental differences in legal philosophy and methodology. The EPO’s problem-solution approach offers a structured and predictable framework, focusing on technical contribution and reducing subjectivity in decision-making. In contrast, the UK courts’ Windsurfing/Pozzoli test provides greater flexibility, allowing for a broader interpretation of the inventive concept and a more case-specific analysis. These differences can lead to divergent outcomes, particularly in cases involving non-technical inventions or where the inventive concept is more abstract. Understanding these distinctions is crucial for patent applicants and practitioners, as the choice of jurisdiction can significantly impact the outcome of a patent application.
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