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 appeal court confirmed the decision of the first instance court that CDVI’s European patent was invalid due to lack of inventive step. However, the decision raises questions in relation to what may be considered to be common general knowledge. Case date: 23 June 2020 Case number: 200.255.497/01 Court: Court of Appeal of The Hague A full…
The use of a generally available tool (here: reverse sandwich assays) can involve an inventive step if the advantages pursued and provided by the invention do not materialize without further effort and if the skilled person would not have found (sufficient) motivation in the state of the art to consider that this tool was suitable…
Mr Justice Morgan handed down judgment on 22 July 2020 ([2020] EWHC 1968 (Pat)) in relation to two patent infringement actions brought by Lufthansa which were heard together. The first infringement action was against two defendants, Astronics Advanced Electronic Systems and Safran Seats GB Ltd. The second action was against Panasonic Avionics Corporation. It is…
Mishan (T/A Emson) v Hozelock & Ors [2020] EWCA Civ 871 Since Arnold LJ’s elevation to the Court of Appeal in 2019, he and Floyd LJ have heard about 11 cases together, spanning a mixture of areas of law, some patents cases and some not. In the majority of these cases, Floyd LJ (or a…
As readers of this blog will be aware, the EPO applies a quite peculiar and unique method to the analysis of inventive step, the “problem-solution approach”. This approach breaks the statutory question of Art 56 whether the invention was, having regard to the state of the art, obvious to a person skilled in the art,…
On 1 April 2020, the Court of Appeal, led by Floyd LJ, handed down judgment concerning the strike out of an Arrow declaration in litigation between Mexichem and Honeywell. Honeywell owns six patents that focus on the use of two refrigerants (‘ze’ and ‘yf’) in mobile air-conditioning systems (“MACs”), often used in cars, with a…
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…
