The inventive step reflects a general patentability requirement in most patent laws, according to which an invention should be sufficiently inventive (not obvious in view of the prior art using the skilled person’s common general knowledge) in order to be patented / the patent to be held valid. In the United States, rather than ‘inventive step’, the expression ‘non-obviousness’ is used: is the invention an adequate distance beyond or above the state of the art? The assessment of the inventive step varies from one country to another. The European Patent Office uses the so-called problem-and-solution approach to assess inventive step, an instrument also used by several national European courts.
The Paris District Court clarified its interpretation of Article 123 EPC regarding disclaimer allowability and allowed a disclaimer restoring novelty of a patent. Click here for the full text of this case. A summary of this case will be posted on http://www.Kluweriplaw.com .
In its “Leflunomid” decision of 24 July 2012 (Case X ZR 126/09), the FCJ declared a patent claim to be invalid which covered a combination of leflunomide and teriflunomide, on the grounds that it had long been known in the prior art (for 100 years) that some leflunomide spontaneously and unavoidably converts teriflunomide over time…
In our post on 30 October 2012 we referred to forthcoming appeals dealing with how the question of obviousness should be tackled by the English courts. The Court of Appeal has now given its verdict in several judgments. The latest decision in Regeneron v Genentech dealt not only with the question of obviousness but also…
The Court held that a decision by the EPO relating to the UK designation was not capable of challenge. In any event, the procedure chosen by the claimant to challenge the decision (an application to correct the UKIPO register based on Rule 50 of the Patents Rules 2007) was wrong, because it required the consent…
The Court of Appeal held that while structural approaches for determining obviousness (with reference to the Pozzoli test), are useful, the importance of the statutory test cannot be undermined. The ultimate question that the Court must address is whether it was obvious to the skilled but unimaginative addressee to make a product or carry out…
Now that we are less than one month away from implementation of the First-Inventor-To-File provisions of the America Invents Act (AIA), stakeholders are considering whether to file new patent applications now, to secure examination under the current First-To-Invent patent system, or wait until March 16, 2013, so that the applications will be governed by the…
In the assessment of inventive step, the question whether the prior art discloses a pointer for the skilled person to use the measures described therein, and to apply these to a known substance, could be relevant. It should be investigated whether the measures from the prior art gave rise to the expectation that the solution…
An invention entailing a talking doll with the ability to send e-mails was held to be unpatentable. The Board of Appeal rejected applicant’s argument that the invention was in the technical field of stuffed animal toys or dolls. There was no contribution in that field because the claim features did not change the toy’s design…
In a recent decision by the Danish Maritime and Commercial Court, the issue was whether a technical feature may consist in information attached to an object if such information increases the usability of the object. The case T-66-07, Svenco Papperssäcker AB v. Segezha Packaging A/S, Svenco had filed suit claiming infringement of its Danish patent…
A patent can be re-assigned to the legitimate rights holder based on a claim of entitlement under Article 118 Italian IP Code, even when the patented subject matter differs from the invention made by the legitimate rights holder, when such differences do not involve an inventive step. A summary of this case will be posted…
