Inventive step CASES

Question 1

*** Pfizer’s patent [2001]

Answer 1

“The question of obviousness has to be assessed through the eyes of the skilled but non-inventive man in the art.

1. This is not a real person.
2. He is a legal creation.
3. He is supposed to offer an objective test of whether a particular development can be protected by a patent.
4. He is deemed to have looked at and read publicly available documents and to know of prior uses of the prior art.
5. He understands all languages and dialects.
6. He never misses the obvious not stumbles on the inventive.
7. He has no private idiosyncratic preferences or dislikes.
8. He never thinks laterally.
9. He differs from all real people in one or more of these characteristics.

Key terms: UK person skilled in the art

Question 2

*** Technograph v Mills and Rockley [SP]

Answer 2

“the hypothetical addressee is a skilled technician who is well acquainted with workshop technique and who has carefully read the relevant literature. He is supposed to have an unlimited capacity to assimilate the contents of, it may be, scores of specifications but to be incapable of a scintilla of invention. When dealing with obviousness, unlike novelty, it is permissible to make a “mosaic” out of the relevant documents, but it must be a mosaic which can be put together by an unimaginative man with no inventive capacity”

Key terms: UK person skilled in the art

Question 3

*** Catnic v Hill & Smith (1982)

Answer 3

“someone likely to have a practical interest in the subject matter of the invention”

Key terms: UK person skilled in the art

Question 4

• Technip France SA’s Patent (2004)

Answer 4

“The man can, in appropriate cases, be a team – an assembly of nerds of different basic skills, all unimaginative. But the skilled man is not a complete android, for it also settled that he will share the common prejudices or conservatism which prevail in the art concerned”

Key terms: UK person skilled in the art

Question 5

*** Halliburton Energy v Smith (2005)

Answer 5

“The skilled person is essentially a legal construct, and not a mere lowest common denominator of all the persons engaged in the art at a particular time. In some cases, it is clear that the specification is addressed to sets of skills that in the real world would be possessed by more than one person, and such a specification can be said to be address to a team”

“It is a team of equals and there is no boss or leader”

Key terms: UK person skilled in the art

Question 6

• Genentech Inc’s Patent [1989]

Answer 6

The notional skilled person can be a team

Key terms: UK person skilled in the art, teams

Question 7

• Cranway v Playtech [2009]

Answer 7

The team will need to be identified before construction, obviousness etc

Key terms: UK person skilled in the art, teams

Question 8

*** Virgin Atlantic v Premium Aircraft [2009]

Answer 8

‘We think it would unrealistic – indeed perverse – for the law to say that the notional skilled reader, probably with the benefit of skilled advice, would not know and take into account the explicit drafting conventions by which the patent and its claims were framed. Likewise when there is a reference to the patent being a divisional application, it would be perverse to work on the basis that the skilled man would not know what that means. A real skilled man reading a patent which, as in the case of the Patent, refers to “the parent application” would surely say “what’s a parent application?” – and he would go on to ask a man who knows, probably a patent agent.’

Key terms: UK person skilled in the art, knowledge of patent law

Question 9

*** General Tire & Rubber v Firestone Tyre (1972)

Answer 9

“The common general knowledge imputed to [the person skilled in the art] must, of course, be distinguished from what in patent law is regarded as public knowledge…common general knowledge is a different concept derived from a commonplace approach to the practical question of what would in fact be known to an appropriately skilled addressee-the sort of man, good at his job, that could be found in real life.”

Key terms: UK identifying the CGK

Question 10

*** Raychem Corp’s Patent (1988)

Answer 10

“The common general knowledge is the technical background of the notional man in the art against which the prior art must be considered. This is not limited to material he has memorised and has at the front of his mine. It includes all material in the field he is working in which he knows exists, which he would refer to as a matter of course if he cannot remember it and which he understands is generally regarded as sufficiently reliable to use as a foundation for further work..”

Not restricted to memorised things, but includes things which would be in textbooks etc.

But not everything in standard textbooks is part of the cgk

Key terms: UK identifying the CGK

Question 11

• Mayne Pharma v Debiopharm SA [2006]

Answer 11

Will include the specific knowledge and prejudices of those most closely involved with the actual field with which the patent is concerned

Key terms: UK prejudices

Question 12

*** Dyson v Hoover [2001]

Answer 12

It requires the adoption of the skilled person’s mindset and not simply the knowledge

Key terms: UK prejudices

Question 13

• Qualcomm v Nokia [2008]

Answer 13

The question is whether the skilled person will consult the text in the relevant respect

Key terms: UK CGK

Question 14

• Teva UK Ltd & Anor v Astrazeneca AB [2014]

Answer 14

The authorities indicate that CGK includes not just information directly in the mind of the notional skilled person, but such information as he would be able to locate by reference to well-known textbooks. This guidance needs to be adapted and kept appropriately up to date for the procedures for dissemination of scientific knowledge in the age of the internet and digital databases of journal articles. Searches of such databases are part and parcel of the routine sharing of information in the scientific community and are an ordinary research technique. In my view, if there is a sufficient basis (as here) in the background CGK relating to a particular issue to make it obvious to the unimaginative and uninventive skilled person that there is likely to be - not merely a speculative possibility that there may be - relevant published material bearing directly on that issue which would be identified by such a search, the relevant CGK will include material that would readily be identified by such a search.

Key terms: UK CGK

Question 15

• Generics (UK) Ltd (t/a Mylan) v Warner-Lambert Company LLC [2015]

Answer 15

“The question does arise here. Counsel for Warner-Lambert submitted that matter relied on as being common general knowledge must be shown to be common general knowledge in the UK, but counsel for Mylan and Actavis disputed that this was necessary. Although I only received limited argument on the point, it seems to me that, at minimum, it must be shown that the matter in question was common general knowledge in the UK. The reason for this is that, whether one is concerned with the validity of a European Patent (UK), or a UK patent, one is concerned with a right in respect of the UK. It is true that the prior art may have been published anywhere in the world, but I do not think that alters the need for the skilled team to consider that art as if they were located in the UK. I do not think it matters that a fact was common general knowledge in (say) China, if it was not common general knowledge here. The position may be different if all the persons skilled in a particular art in the UK are acquainted with the position in China, but no point of that kind arises here. I do not consider that this approach is contrary to Article 27(1) of TRIPS, which provides that “patents shall be available and patent rights enjoyable with discrimination as to the place of invention”, as counsel for Mylan and Actavis submitted”

Key terms: UK CGK

Question 16

*** Conor Medsystems v Angiotech [2008]

Answer 16

The basis of the inventive concept is the claims

So it is a matter of construction

“[it is ‘obvious to try’ if] the person versed in the art would assess the likelihood of success as sufficient to warrant actual trial”

Key terms: UK Inventive concept

Question 17

• Generics v Lundbeck [2009]

Answer 17

‘… The expressions [inventive concept / contribution] are certainly connected, but I do not think it is helpful … to treat them as having precisely the same meaning. “Inventive concept” is concerned with the identification of the core (or kernel, or essence) of the invention – the idea or principle, of more or less general application … which entitles the inventor’s achievement to be called inventive. The invention’s technical contribution to the art is concerned with the evaluation of its inventive concept – how far forward has it carried the state of the art? The inventive concept and the technical contribution may command equal respect but that will not always be the case.’

Key terms: UK Inventive concept not the same as technical contribution

Question 18

*** Asahi Medical v Macopharma [2002]

Answer 18

“I …must first make it clear that a decision on obviousness does not require a conclusion as to whether or not the skilled person would be slightly, moderately or particularly interested in any document. The court has to adopt the mantle of the skilled person. That mantle will include the prejudices, preferences and attitudes that such persons had at the priority date. Thereafter the court has to decide whether the step or steps from the prior art to the invention were obvious. That decision has to be taken without the invention in mind and through the eyes of the skilled person. Of course any prior art document relied on must be deemed to be read properly and in that sense with interest. To conclude otherwise would deprive the public of their right to make anything which is an obvious modification of a published document”

Key terms: UK identifying the difference between the CGK and the invention.

Question 19

*** Mölnlycke v Proctor and Gamble (1994)

Answer 19

“[inventive step] is the criterion for decided whether or not the claimed invention involves an inventive step is wholly objective. It is an objective criterion… We do not consider that it assists to ask whether ‘the patent discloses something sufficiently inventive to deserve the grant of a monopoly’. Nor is it useful to extract from older judgments expressions such as ‘that scintilla of invention necessary to support a patent’”

Key terms: UK objective test

Question 20

*** Savage v Harris (1896)

Answer 20

“Cases, so far as regards the law, are most useful, but when they are applied to particular facts, they, as a rule, are of little service. Each case depends on its own particular facts and the facts of almost every case differ”

Key terms: UK objective test

Question 21

*** Technograph v Mills & Rockley (1972) [prior art]

Answer 21

“When dealing with obviousness, unlike novelty, it is permissible to make a ‘mosaic’ out of the relevant documents, but it must be a mosaic which can be put together by an unimaginative man no inventive capacity”

Key terms: UK mosaicing

Question 22

*** Glaxo Group Ltd’s Patent (2004)

Answer 22

“mosaicing of individual documents or prior uses said to form part of the state of the art [is not permitted], unless it can be shown that the skilled person, confronted with a particular citation, would turn to some other citation to supplement the information provided by the first.”

Key terms: UK mosaicing

Question 23

• T 1/80 Carbonless Copying Paper/BAYER [1981]

Answer 23

In the problem-and solution-approach, there are three main stages:

(i) determining the “closest prior art”;
(ii) establishing the “objective technical problem” to be solved; and
(iii) considering whether or not the claimed invention, starting from the closest prior art and the objective technical problem, would have been obvious to the skilled person”

Key terms: EP problem and solution

Question 24

• T 641/00 Two identities/COMVIK [2003]

Answer 24

The person is an expert in the technical field

Key terms: EP person skilled in the art

Question 25

T 5/81 Hollow thermoplastics/SOLVAY [1982]

Answer 25

The person is notional (a legal construct)

Key terms: EP person skilled in the art

Question 26

• T 39/93 Polymer powders/ALLIED COLLOIDS [1997]

Answer 26

The person possesses no inventive capacity

Key terms: EP person skilled in the art

Question 27

• T 426/88 Industrial combustion/LUCAS [1992]

Answer 27

Where the skilled person practices the trade is immaterial (i.e. in Ireland, Japan or US does not matter)

Key terms: EP person skilled in the art

Question 28

• T 164/92 Computer Program/BOSCH [1995]

Answer 28

The skilled person might consult other people

Key terms: EP person skilled in the art

Question 29

• T 60/89 DNA/HARVARD [1992]

Answer 29

The skilled person might be a team

Key terms: EP person skilled in the art

Question 30

T 455/91 Expression of yeast/GENETECH [1995]

Answer 30

Might be conservative and unwilling to take risks (e.g biotech

Key terms: EP characteristics of the field

Question 31

• T 60/89 DNA/HARVARD [1992]

Answer 31

But not relevant everyone a Noble Prize winner

Key terms: EP characteristics of the field

Question 32

• T 890/02 Chimeric gene/BAYER [2005] [SP]

Answer 32

‘…the Boards have acknowledged that the skilled person does not necessarily have knowledge of the whole technology, and they have identified three important aspects – common to all cases – for correctly assessing the common general knowledge of the person skilled in the art.
(a) Firstly, the skills of such a person include not only basic general knowledge of a particular field of technology, but also the ability to look up such knowledge in encyclopaedias and handbooks as well as, in exceptional cases, in a series of relevant studies…, or in a scientific publication or a patent specification…
(b)Secondly, it cannot be expected that, in order to identify this common general knowledge, the skilled person will carry out a comprehensive search of the literature covering virtually the whole state of the art. No undue effort in the way of such a search can be required from the person skilled in the art.
(c)Thirdly, the information found must be unambiguous and usable in a direct and straightforward manner without doubts or further research work…
These three aspects actually correspond to the classical steps of (a) picking an adequate reference book (handbook, encyclopaedia, etc.) from the bookshelf in the library, (b) identifying the appropriate section(s) without this requiring any significant effort and (c) getting the information or unambiguous data that can be used without further research work.
It follows from the foregoing that for each case the common general knowledge of the skilled person working in a particular technical field must be decided on its own merits, based on the facts and evidence of that particular case.’

Key terms: EP CGK

Question 33

• T 606/89 Unilever/Particulate detergent composition

Answer 33

The closest prior art is generally that which corresponds to a similar use and requires the minimum of structural and functional modifications to arrive at the claimed invention.

Key terms: EP closest prior art

Question 34

T 334/92 Benzodioxane derivatives/EISAI

Answer 34

The age of the prior art is usually irrelevant (unless the skilled person would ignore it):

Key terms: EP closest prior art

Question 35

T 254/86 Dye/SUMITOMO [1989]

Answer 35

Not relevant whether the prior art has been commercially exploited

Key terms: EP closest prior art

Question 36

• Guidelines for Examination in the EPO

technical problem

Answer 36

“Establish, in an objective way, the technical problem to be solved. To do this one studies the application (or the patent), the closest prior art and the difference (also called “the distinguishing feature(s)” of the claimed invention) in terms of features (either structural or functional) between the claimed invention and the closest prior art, identifies the technical effect resulting from the distinguishing features, and then formulates the technical problem.

…The objective technical problem derived in this way may not be what the applicant presented as “the problem” in his application.”

Key terms: EP problem and solution

Question 37

• T 149/93 RETINOIDS/Kligman II

Answer 37

The EPO can reformulate the problem:

Key terms: EP problem and solution

Question 38

• T229/85 Etching metal services/SCHMID [1987]

Answer 38

The problem should not be formulated with any hindsight

Key terms: EP problem and solution

Question 39

• T 641/99 Two identities/COMVIK [2003]

Answer 39

The problem can be formulated to include non-technical aspects

‘Although the technical problem to be solved should not be formulated to contain pointers to the solution or partially anticipate it, merely because some feature appears in the claim does not automatically exclude it from appearing in the formulation of the problem. In particular where the claim refers to an aim to be achieved in a non-technical field, this aim may legitimately appear in the formulation of the problem as part of the framework of the technical problem that is to be solved, in particular as a constraint that has to be met.’

Key terms: EP problem and solution

Question 40

*** T 2/83 Rider/Simethicone [1979-85

Answer 40

Something is obvious if a person would have carried it out with an expectation of success.

“the point is not whether the skilled person could have arrived at the invention by adapting or modifying the closest prior art, but whether he would have done so because the prior art incited him to do so in the hope of solving the objective technical problem or in expectation of some improvement or advantage”

Key terms: EP problem and solution

Question 41

• T 239/85 Optical recording/DISCOVISION [1997]

Answer 41

‘…When considering whether there is inventive step the examining instance is bound to form itself an opinion on the question of what the person skilled in the art would be taught by the prior art documents and whether he would, under the circumstances of the case, be expected to combine certain documents either as a whole or in part. In the view of the Board it has to be assumed that a person reading a document pertaining to the art in which he is skilled is capable of distinguishing between a general concept contained in the document and a particular way described to put this concept into effect. Equally, where a prior art document discloses several technical features in combination he must be assumed to be capable of distinguishing between those features which are relevant to the problem he wishes to solve and those features which are not relevant in this respect.’

Key terms: EP problem and solution, mosaicing

Question 42

• T 551/89 SIEMANS

Answer 42

There are certain things which can be seen as secondary indications of inventiveness (as the assessment is so difficult indicators are helpful)
But even when these are found it does not mean something is inventive

Key terms: Other considerations

Question 43

• T 21/81 Electromagnetic operated switch/ALLEN BRADLEY [1983]

Answer 43

Where the invention would be obvious to a person a bonus or unforeseen effect does not change that.

Key terms: EPO bonus effect

Question 44

• T 227/89 Flame retarding polyester/TORAY [1993]

Answer 44

A surprising effect is patentable, however, this is where the discovered effect is more important than the obvious outcome

Key terms: EPO bonus effect

Question 45

• Napp Pharmaceutical Holdings Ltd v Sandoz [2009]

Answer 45

‘An unexpected advantage only fails to defeat an obviousness attack where there is a real motive to use the idea apart from that advantage. For only then will the skilled man more or less inevitably bump into the unexpected advantage.’

Key terms: UK bonus effect

Question 46

• Degussa Hall v Comptroller [2004]

Answer 46

Only where the invention is non-obvious for reasons other than the unexpected advantage will it survive the attack

Key terms: UK bonus effect

Question 47

• T 605/91 Railroad line bed

Answer 47

It is necessary to show there is a general need in the industry

Key terms: EPO long felt need

Question 48

*** Brugger v Medic-Aid [1996]

Answer 48

‘An apparently minor development which meets a long felt want may be shown to be non-obvious because, although the prior art has been long available, the development was not hit upon by others notwithstanding that there was a need for improvement (the ‘want’) and an appreciation of that need (the ‘felt’). In other words the age of prior art may be an indication that a development from it is not obvious if it can be shown that the circumstances in the relevant trade were such that a failure of the development to appear earlier is surprising….It is only when the answer to the question “why was this not developed earlier” is “a likely and reasonable explanation is that people looking for a way round an existing problem did not see this as the answer” that the age of the prior art should play a part in meeting an obviousness attack.’

“a route may still be an obvious one to try even if it is not possible to be sure that taking it will produce success, or sufficient success to make it commercially worthwhile…if a particular route is an obvious one to take or try, it is not rendered any less obvious from a technical point of view merely because there are a number, and perhaps a large number, of other obvious routes as well.”

Key terms: UK long felt need

Question 49

• T 300/90 Stalblizing tumor necrosis

Answer 49

Is there a generally accepted technical prejudice which can be substantiated by facts

Key terms: EPO overcoming prejudice

Question 50

• T 62/89 INT.STAND ELECT

Answer 50

The prejudice must be shown by the person skilled in the art (and not someone in a related art)

Key terms: EPO overcoming prejudice

Question 51

• T 69/83 BAYER [1984] [IS]

Answer 51

A work around the prejudice is not the same as overcoming it and so doing so cannot make something inventive

Key terms: EPO overcoming prejudice

Question 52

• Pozzoli v BDM [2007]

Answer 52

‘Patentability is justified because the prior idea which was thought not to work must, as a piece of prior art, be taken as it would be understood by the person skilled in the art. He will read it with the prejudice of such a person. So that which forms part of the state of the art really consists of two things in combination, the idea and the prejudice that it would not work or be impractical. A patentee who contributes something new by showing that, contrary to the mistaken prejudice, the idea will work or is practical has shown something new. He has shown that an apparent “lion in the path” is merely a paper tiger. Then his contribution is novel and non-obvious and he deserves his patent.’

Key terms: UK overcoming prejudice

Question 53

*** Haberman v Jackel International (1999

Answer 53

“Mrs Haberman has taken a very small and simple step but it appears to me to be a step which any one of the many people in this trade could have taken at any time over at least the preceding ten years or more. In view of the obvious benefits which would flow from it, I have come to the conclusion that had it really been obvious to those in the art it would have been found by others earlier, and probably much earlier. It was under their very noses. As it was it fell to a comparative outsider to see it. It is not obvious”

“The fact that an invention is copied by a competitor does not suggest the patent is inventive, but it may be relevant to the issue of commercial success.”

Key terms: simplicity

Question 54

Guidelines for Examination in the EPO (hindsight)

Answer 54

It should be remembered that an invention which at first sight appears obvious might in fact involve an inventive step. Once a new idea has been formulated, it can often be shown theoretically how it might be arrived at, starting from something known, by a series of apparently easy steps. The examiner should be wary of ex post facto analysis of this kind…

Question 55

*** Westinghouse v Braulik (1910)

Answer 55

“I view with suspicion arguments to the effect that a new combination, bringing with it new and important consequences in the shape of practical machines, is not an invention, because, when it has once been established, it is easy to show how it might be arrived at by starting from something known, and taking a series of apparently easy steps. This ex post facto analysis of invention is unfair to the inventors and, in my opinion, it is not countenanced by English patent law”

Key terms: UK hindsight

Question 56

Technograph v Mills & Rockley (1972) [hindsight]

Answer 56

“the familiar ‘step by step’ course…I do not find it persuasive. Once an invention has been made it is generally possible to postulate a combination of steps by which the inventor might have arrived at the invention that he claims in his specification if he started from something that was already known. But it is only because the invention has been made and has proved successful that it is possible to postulate from what starting point and by what particular combination of steps the inventor could have arrived at his invention.

Key terms: UK hindsight

Question 57

• T 149/93 Retinoids/KLIGMAN II

Answer 57

There must have been a reasonable expectation (not merely hope) of success:.

Key terms: EPO obvious to try

Question 58

• T 91/88 Antiviral/WELLCOME

Answer 58

There is a stricter test for simple routine tests (so called try and see) and a skilled person would simply carry those out.

Key terms: EPO obvious to try

Question 59

*** John Manville Corp’s Patent (1967)

Recently approved: Conor Medsystems v Angiotech [2008]

Answer 59

“[it is obvious if] the person versed in the art would assess the likelihood of success as sufficient to warrant actual trial”

Key terms: UK obvious to try

Question 60

*** British Celanese v Courtauld (1935)

Answer 60

“a mere placing side by side of old integers so that each performs its own proper function independently of any of the others is not a patentable combination, but that where the old integers when placed together have some working interrelation producing a new or improved result then there is a patentable subject-matter in the idea of the working interrelation brought about by the collocation of the integers”

Key terms: combination inventions

Question 61

Lord Hoffmann, Sabaf v MFI Furniture (2005)

Answer 61

“before you can apply section 3 and ask whether the invention involves an inventive step, you first have to decide what the invention is. In particular, you have to decided whether you are dealing with one invention or two or more inventions. Two inventions do not become one invention because they are included in the same hardware.”

Key terms: combination inventions

Question 62

• T 91/83 Plug for affixing screws/HASMONAY [1979-85]

Answer 62

In general commercial success of an invention does not indicate inventiveness

Key terms: EPO commercial success

Question 63

• T 106/84 Packing Machine/MICHAELSEN [1985]

Answer 63

Small company without sales team more likely to suggest inventiveness than huge company.

Key terms: EPO commercial success

Question 64

• T 626/96 Commercial success/WATER TAP

Answer 64

Success in a short period of time in a number of countries might suggest inventiveness.

Key terms: EPO commercial success

Question 65

• T 478/91 Pulley system/AUBECQ

Answer 65

It is necessary to exclude other factors such as market monopoly, advertising or better selling techniques.

Key terms: EPO commercial success

Question 66

• Samuel Parkes v Cocker Bros (1929)

endorsed in Alan Nutall v Fri-Jado [2008]

Answer 66

The commercial success of an invention can, in rare instances, be indicative of inventiveness.

‘The user of this particular clip has been large. Over 1 1⁄4 millions were sold up to the end of 1927. The Railway Companies have adopted it as standard, and to that extent it has beaten its competitors out of the field. The truth is that, when once it has been found, as I have found here, that the problem had waited solution for many years, and that the device is in fact novel and superior to what had gone before, and has been widely used, and used in preference to alternative devices, it is, I think, practically impossible to say that there is not present that scintilla of invention necessary to support the Patent.’

Key terms: UK commercial success

Question 67

*** Toshiba / Thickness of Magnetic Layers T26/85

Answer 67

… in assessing the novelty of the invention under examination over the prior art in a case where overlapping ranges of a certain parameter exist, it has to be considered whether the person skilled in the art would in the light of the technical facts seriously contemplate applying the technical teaching of the prior art document in the range of overlap. If it can be fairly assumed that he would do so it must be concluded that no novelty exists.

2. If there exists in a prior art document disclosing a range of a parameter a reasoned statement dissuading the person skilled in the art from practicing the technical teaching of the document in a certain part of the range, such part has to be regarded as novel for the purposes of Article 54 EPC.

Question 68

Pfizer’s patent (commercial success)

Answer 68

“Doing what is obvious can be commercially successful. Commercial success comes into its own as a secondary indication of inventiveness where both the relevant prior art has been available and the need for a solution to a known problem has been sought for a long time. Failure to make the step which is covered by the patent in those circumstances may be some indication that it is not as obvious as it might first appear”

Question 69

*** Windsurfing International v Tabur Marine (1985) RPC 59

Answer 69

There are four steps for assessing whether something is obvious:

(i) The first is to identify the inventive concept embodied in the patent in suit;
(ii) Thereafter, the court has to assume the mantle of the normally skilled but unimaginative addressee in the art at the priority date and to impute to him what was, at that date, common general knowledge in the art in question.
(iii) The third step is to identify what, if any, differences exist between the matter cited as being “known or used” and the alleged invention.
(iv) Finally, the court has to ask itself whether, viewed without any knowledge of the alleged invention, those differences constitute steps which would have been obvious to the skilled man or whether they require any degree of invention.

Question 70

Pozzoli v DBMO TEST

Answer 70

(1) (a) Identify the notional “person skilled in the art”; (b) Identify the relevant common general knowledge of that person;
(2) Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;
(3) Identify what, if any, differences exist between the matter cited as forming part of the “state of the art” and the inventive concept of the claim or the claim as construed;
(4) Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?

Question 71

• T 5/81 Hollow thermoplastics/SOLVAY

Answer 71

The person is notional (a legal construct)

Question 72

• T 455/91 Expression of yeast/GENETECH

Answer 72

[Skilled person ]Might be conservative and unwilling to take risks (e.g biotech):

Question 73

• T 79/89 T 79/82 Abschirmung elektromagnetischer

Answer 73

Long-felt need is not proven by the age of the prior art and it must be supported by other facts:

Question 74

• Regeneron Pharmaceuticals v Genentech [2012] EWHC 657

Answer 74

An inventor receives a major award or prize for something related to the patent this is good secondary evidence of its inventiveness.

Question 75

• Minnesota Mining v Ati Atlas [2001] FSR 31

Answer 75

Of course, it may well be that the competitor has formed the view the invention is obvious in which case there is no reason not to copy.

Question 76

Haberman v Jackal factors

Answer 76

(a) What was the problem which the patented development addressed?
(b) How long had that problem existed?
(c) How significant was the problem seen to be?
(d) How widely known was the problem and how many were likely to have been seeking a solution?
(e) What prior art would have been likely to be known to those expected to have been involved in finding a solution?
(f) What other solutions were put forward in the period leading up to the publication of the patentee’s development?
(g) To what extent were there factors which would have held back the exploitation of the solution even if it was technically obvious?
(h) How well had the patentee’s development been received?
(i) To what extent could it be shown that the commercial success was due to the technical merits of the development?