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.
Two decisions T 0184/17 and T 0603/14 were recently issued concerning admissibility of late inventive step attacks on appeal. Both cases were decided under the old Rules of Procedure of the Boards of Appeal (RPBA), but will likely still be relevant under the increased procedural stringency of the new RPBA. T 0184/17 – A Tea…
In a thorough decision, Barcelona Commercial Court (Section 15) clarifies important findings on novelty, inventive step and claim construction. A technical feature disclosed in the prior art will not anticipate an identical feature if the exact same functionality is not described in the prior art, even if it is common ground that the prior art’s…
As was rightly noted on this blog, the skilled person’s “hope” of solving the objective technical problem using the means that led to the (later claimed) invention, has disappeared from the Guidelines for Examination. What we are left with is the (perhaps) more objective “expectation of some improvement or advantage (see T/83)”. Interestingly, this expectation…
One of the key questions in the assessment of inventive step within the EPO is whether or not the skilled person will adapt or modify the teaching of the closest prior art and arrive at the invention. The EPO answers this question using the so-called could-would approach developed in the early decision T2/83 of a…
This decision is certainly worth reading if you deal with inventive step objections of the form “abstract algorithm implemented on a generic computer” or the like. The Board of Appeal provides a helpful review of case law, and pushes back the frequent assumption that improved algorithms cannot give a technical effect. This decision could well…
The Supreme Court held that the Court of Appeal was entitled to treat the judge’s failure to appreciate the logical consequence of a particular finding as an error of principle which allowed an appellate court to carry out its own evaluation. Therefore the Court of Appeal was entitled to interfere with the trial judge’s assessment…
A claim to a device will be denied patentability under Art. 53(c) EPC if it can only be produced through the exercise of a surgical method step. A European patent was granted for a device for the desynchronization of activity of pathologically active brain areas. Specifically, the claim defined ‘control means, which are designed such…
The case at hand concerned an application by Pfizer for Arrow-declarations in relation to its proposed launch of its bevacizumab product (it will be branded “Zirabev”) for the treatment of various cancers in combination with other drugs. Since Pfizer was unable to show a “useful purpose”, the complaint was dismissed. The mere prospect of using…
Although at first instance the patent was found to lack inventive step without using the problem-and-solution approach, the use of the PSA by the Court of Appeal did not make a difference to the outcome in the present case. Case date: 28 May 2019 Case number: 200.222.873/01 Court: Court of Appeal of The Hague A full…
A further interesting decision handed down by the Judges of the English Patents Court prior to the Easter break was a judgment from Nugee J concerning proceedings between E. Mishan and Hozelock relating to a UK patent and European patent, both entitled “Expandable Hose Assembly”. E. Mishan (trading as Emson) claimed that Hozelock’s expandable garden…
