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 German Federal Court of Justice (FCJ) recently issued a second decision in a nullity lawsuit revolving around a windscreen for vehicles (Fahrzeugscheibe II, X ZR 41/14). While the first decision dealt with interesting questions regarding the transferability of the right to priority, the second one treads more conventional paths, yet it still contains a…
The end of July traditionally brings a flurry of patents judgments from the English Courts. This year was no exception, hence the large number of posts in the last few days. Among this year’s flurry was a decision handed down by the Court of Appeal on 27 July 2016 in Hospira v Genentech ([2016] EWCA…
On 29 April 2016, the Australian Productivity Commission published a Draft Report on its enquiry into Australia’s Intellectual Property Arrangements. Although the Draft Report provides separate analyses on the state of copyright, patents, designs and trade marks, it arrives at a common conclusion: Aussie IP needs work. “Not as effective as they could be” The…
Wolters Kluwer released a new title last week in the Information Law Series: The Inventiveness Requirement in Patent Law by Lodewijk Pessers. Pessers recently received his Ph.D. in this subject. We asked the author to briefly describe the book’s contents. By Lodewijk Pessers ‘The Inventiveness Requirement in Patent Law’ tries to answer the question of…
by Rachel Mumby Bexsero, the Meningitis B vaccine marketed by GSK, has been the subject of many newspaper headlines in the UK over the last year, with parents seeking to persuade the UK Government to offer the vaccine to all children under the age of 11 as a matter of routine. Few will have been…
by Rachel Mumby It would be an unusual case in which the parties did not criticise each other’s experts in one way or another, and indeed patent litigators in England and Wales have become no stranger to judicial criticism of the way that experts are instructed. However, in the case of American Science & Engineering…
A recent decision by the German Federal Court of Justice (Polyesterabmischungen, X ZR 90/11) relating to a patent concerning polyester resin blends may be instructive to demonstrate how an experimental report reproducing a prior art test instruction can be helpful to a nullity plaintiff, even if the description in the prior art document is incomplete…
Case reported and summarized by Gregory Bacon, Bristows LLP Mr Justice Carr is only a few months into his judicial career, but having already provided welcome guidance on the role of plausibility in considering both the questions of inventive step and sufficiency (see earlier blog post on Actavis v Eli Lilly), he has now produced…
As readers well know, according to article 56 of the European Patent Convention “an invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art.” In practice, the application of this article requires factual and legal assessments…
Mr Justice Carr has only been sitting as a full time judge for just over a month and yet in his decision of 16 November 2015, he has already produced what this author considers to be a sensible, but thought-provoking judgment that is readable and comparatively concise. The case involved a challenge by the well-known…
