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Free 2.2 Law Essay: (Masters Level)

The inventive step is "as futgive , impalpable , wayward and vague a phantom as exists in the whole paraphernalia of legal concepts". Discuss

The law regularly faces challenges created by advances in technology for which it must accommodate. In particular, patent law must constantly develop because, by definition, it is concerned with the 'state of the art.' In the UK, the pertinent legislation is the Patent Act 2004, to which the UK legislation was brought into line with the revised European Patent Convention which was decided by Diplomatic Conference in November 2000. The 2004 Act, with regard to the inventive step, leaves Section 1 provisions of the Patent Act 1977 unchanged. It therefore proposes that, in order to facilitate eligibility for registration, there are four major requirements which must to be satisfied: that the invention is new; it involves an inventive step; it is capable of industrial application; and that it does not fall within the specified exclusions of Section 1 of the Act.

This essay examines the requirement of inventive step, in other words; if, given the former art which a proficient man would be considered to know at the priority date of a patent, the course of action would have been obvious or would have necessitated simply the application of customary engineering principles then it will be unsuccessful for obviousness or lack of inventive step. For this meaning, state of the art does not comprise patent applications that have been filed at the priority date but not yet published, though, it does comprise of 'common general knowledge.' An invention shall thus be taken to be new if it does not form part of the state of the art. In addition to being one of the most imperative requirements of patentability, the inventive step is also the most arduous when it comes to its precise meaning. This ambiguity is owing to the elusiveness of some of the words contained in Section 3 and its equivalent in the European Patent Office (hereinafter EPO), article 56. Above all there is perplexity owing to the word 'obvious.'

According to UK law, an invention will hence involve an inventive step if it is not obvious to the person skilled in that art. The responsibility will be on the Patent Office upon application or the Opponent upon revocation proceedings to establish that the invention is obvious. In practice, identifying what is obvious and what is not is very complex and proves to be very problematical for the Patent Office and the courts. The question is typically thought of as being a legal one, but it has been argued that it does not ensue that dubious factual issues are entirely nonexistent from the interpretation of a patent. The resolution of such disputes was described by Hand, in Harries v Air King, as 'plainly a question of fact,' subject to 'clearly erroneous appellant view.' It was said that the inventive step is:

As fugitive, impalpable, wayward, and vague a phantom as exists in the whole paraphernalia of legal concepts.

Indeed, it is submitted that the test involves a specific investigation into inherently factual considerations, such as the intensity of ordinary skill in the relevant technical or scientific community and the connotation of certain terminology and other extrinsic evidence by a finder of fact. It is therefore an unreality to imagine that the court does not employ typical fact finding conduct, by appraising integrity and reflecting on the comparative strength and probity of the evidence. This means that the courts are reluctant to overturn earlier decisions as it is likely that different conclusions are reached for comparable inventions, making it challenging to recommend as to the inventive step of an invention and for that reason to attack an invention or in fact for the Patent Office to introduce an objection.

To resolve this hesitation, both the EPO and the UK courts developed their own personal attitude to this conundrum, in spite of the quasi-identical phrasing between Section 3 and Article 56. Europe endeavoured to regularize a common agenda which became the strength of character of the so-called 'problem-solution approach.' The concept was to acquire a controlled test founded on a dependable succession of interrogations to be determined by the examiners. This meant betrayal of the statutory definition of 'inventive step,' under Article 56 in three ways: determining the closest prior art; establishing the technical problem to be solved, and; considering whether or not the claimed invention, starting from the closest prior art and the technical problem, would have been obvious to the skilled person. The test was proposed to be as impartial as possible. This was considered to be reached essentially by building the test on three unbiased notions, the proposed 'generally applicable working principles.' Firstly, the closest prior art: the amalgamation of features derivable from one solitary orientation that supplies the best source for bearing in mind the enquiry of 'obviousness;' Secondly, the technical problem to be solved: recognized by scrutinizing the application, the closest prior art, and the diverse terms of description- either structural or functional- between the invention and the closest prior art. Finally, the skilled person: theoretically skilled individual, or group of people in some cases, for example advanced technologies, capable of demonstrating such ability, background wisdom and credentials pertinent to the discipline in which he works. It is through the eyes of that person or teams of persons that obviousness is gauged.

Consequently, instead of enquiring whether an invention itself was obvious, the EPO considers whether the resolution that this invention presents to an unwavering predicament would have been obvious to a person skilled in the art at the priority date of the invention. The worth of this test is that facilitates one to manage the task of responding to the question of obviousness in an ordered way. A long way from being perfect, this test has been condemned in the UK for its exploitation of retrospection and the reality that it is gratuitously simulated because many inventions developed are devoid of having a problem in mind. This opinion is highlighted in the following quotation:

Nevertheless problem and solution analysis does not remove the element of judgement inherent in the assessment of inventiveness, but rather displaces it from the task set by the EPO, to another task which is inessential to Article 56 EPO. In that connection the Board sees a welcome trend in some recent unreported decisions, which have emphasised that the investigation of inventiveness should avoid formulating artificial and unrealistic technical problems, and should normally start from the technical problem identified in the patent in suit.

Conceivably the most imperative opposition is that, while the EPO test is offered as being appropriate to all kinds of study, there are circumstances where its function is unfitting. Certainly it is not simple to devise a predicament for many inventions, for example in the chemical-pharmaceutical field. The case of Alcan/ Aluminium Alloys went further in criticising this approach. It was stated that there was no legal basis to bestow a solitary test to consider inventiveness under Article 56 EPO; that there should not to be a penalty where the court does not have the same opinion in that selected prior art used to substantiate a position; such an attitude necessitates a search of prior close art, which can only be performed with genuine acquaintance of the invention and therefore jeopardizes the use of retrospection to settle on obviousness; care requisite when applying the problem-solution approach; an additional downside of the problem-solution approach was that it can result in convoluted multi-step reasoning in otherwise literally apparent cases, and; where an invention broke new ground there would be no prior art to prepare the problem and initiate the test.

On the contrary, UK courts have mainly remained secluded from and opposed to the acceptance of the 'problem-solution' approach and its test for gauging obviousness. As an alternative when contemplating the way in which obviousness is to be considered they have relied on the test set out in 1985 by Oliver LJ in the purported Windsurfer case. The case involved a patent for a sailboard, which had previously been approved to the plaintiffs, the legality of which was introduced as a defence to infringement proceedings brought in opposition to the defendant. To deal with the enquiry of obviousness and consequently a lack of inventive step, which was suspected by the defendant, Oliver LJ set out to employ a four stage test: the court should recognize the inventive concept personified in the patent in suit; the court must assume the responsibility of the generally skilled although unimaginative addressee in the art at the priority date and to assign to him what was, as the date, ordinary common knowledge in the art in question; then recognize the disparity between mentioned prior art and the patent in suit; regarded without any knowledge of the alleged invention, those distinctions represent steps which would have been obvious to the skilled man or whether they necessitate a extent of invention. In more optimistic light, the courts must first ascertain the disparity that is present involving the state of the art and the alleged invention. Then they have to take into account whether those distinctions were or not obvious, when observed with the eyes of a skilled but unimaginative person. Similar to the EPO test, the UK test is established on several impartial ideas, for example skilled person. It was intended to be as unprejudiced as achievable, that is appropriate to all variety of research and situations. Its significance, like the EPO test, is that it permits the Courts to manage the duty of responding to the problem of obviousness in a prepared way. On the other hand, the imperfection of this examination is that it over- complicates the statutory definition of the inventive step obligation devoid of reducing the perplexity and ambiguity that has long been connected with it. Certainly it does not supply any leadership on the requisite assessment itself and ends up simply restating it.

In following years however, there was a mounting confidence that the EPO test should be applied in the UK. In part, this has been stimulated by a comprehension that the two tests may not be theoretically as diverse as they first seemed. Conceivably the strongest encouragement for the problem-solution methodology and its test for measuring the obviousness in the UK comes from the House of Lords decision in Biogen v Medeva and Kirin-Amogen v Hoechst Marion Roussel. Lord Hoffman stipulated here that there needs to be an implied or express provision for the problem-solution approach in the interpretation of the inventive step. The benefit of such a development would be at least to have a harmonised test in Europe.

The most noteworthy revision to our understanding of inventive step can be seen from the EPO guidelines for Substantive Examination (2003) and recent cases like Sabaf Spa v MFI Furniture Centres Limited and others and Conjoined Appeals (2004). These precedents have turned the previous regulations down, employing a new standard to identify the inventive step. This is known as the 'law of collocation,' according to it the patent claim must be rejected where the invention consists simply in the juxtaposition or association of known devices or processes operating in their common way and not creating any non-obvious working inter-relationship.

In the case mentioned above, Sabaf was the proprietor of a patent for a burner used in gas cookers and hobs. The patent terminated in June 2001 but Sabaf initiated proceedings against MFI and Meneghetti Spa previous to this date. Meneghetti manufactured burners of a generally comparable formation to those safeguarded by the Sabaf patent in Italy and sold them to MFI, for use in their kitchen hobs retailed in the UK market. MFI settled with Sabaf preceding trial and so were not represented at any period in the events. Sabaf's burner was used to conquer inconveniences with existing burners of this kind. This caused them to be in the main inappropriate for purpose in domestic kitchens where a compact and flat assembly was requisite in order to mount inside a kitchen worktop. Sabaf's burner utilized a radical mixing passage, which drew air into a chamber from above the unit, with the intention of accomplishing this.

At first instance Laddie LJ understood that Meneghetti's burner infringed the Sabaf patent, but that it was in any affair invalid for obviousness. The two inventive features considered were whether, extracting air from above the unit and applying a radical mixing passage, were both evident in light of the preceding art. In attaining this inference, Laddie LJ referred to 'the law of collocation,' as set out in British Celanese Ltd v Courtaulds Ltd, harmonizing with the declaration that 'a mere placing side by side of old integers so that each performs its own proper function independently of any of the other is not a patentable combination.' This direction pre-dated the 1977 Act, and as Laddie himself confessed, did not correspond positively with the Windsurfing approach to obviousness. However Laddie LJ deemed the observation to be well-matched with the EPO. The Court of Appeal reversed Laddie's findings, but they were again reversed by the House of Lords. The House of Lords reapplied Laddie's tactic to obviousness, with the consequence that the patent was again found to be invalid.

Lord Hoffmann in the House of Lords gave the majority judgement and he decided that there was no law of collocation to the degree that this qualified section 3 of the Act. On the other hand, he stated that in advance of applying section 3 of the Act, it was obligatory to determine: what the invention was and; whether the case in question dealt with one invention or a number of inventions. Furthermore, he said that section 3 should be employed independently to each integer which achieves 'its own proper function independently of any of the others.' Only when two integers interrelate with each other do they comprise a solitary invention and in such situations section 3 should be put into operation to the idea of combining them. In deduction of this 'new approach' therefore, the House of Lords was at caution to emphasize that there is no law of collocation in terms of an annotation on section 3. It is unmistakable that the standard is all the same in existence and admirable where the patent maintains an amalgamation of two known descriptions and is no more than a total of its parts. In such a state of affairs, caution needs to be accredited to considering what is the invention or possible invention contained in a patent claim before attempting to apply the Windsurfing test.

The benchmark of obviousness and its application are more biased and contentious than to the condition of novelty. If the requirements are se very high, almost nothing is patentable. Likewise, if the requirements are small, all sorts of insignificant inventions can be given patents. The threshold for inventive step can be predominantly indistinct if the inventor finds two classes of a specific genre, for example two particular chemical compositions out of 10,000 in the broader genre, ought the inventor be permitted to the whole genre? Finally, notwithstanding protection, some patents still present the sense of triviality, for example the comb-over patent 1975, which was awarded 1004 Nobel Prize. It seems reasonable to assume Hand's quotation as expressed in the earlier part of this essay.

Bibliography
Essentials of Licensing Intellectual Property, John Wiley and Sons, 2004
Butterworths, Intellectual Property and Technology Direct, 2004
Blackstones Statutes Itellectual Property 2004-2005 Oxford University Press

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