Inventive Step - Cases

Question 1

Pfizer’s patent [2001]

Answer 1

Obviousness is assessed through eyes of skilled person.

Skilled person:

(i) not a real person
(ii) a legal creation
(iii) supposed to offer an objective test of patentability
(iv) deemed to have read all the prior art and to know of prior uses of prior art
(v) understands all languages and dialects
(vi) never misses the obvious nor stumbles on the inventive
(vii) has no private idiosyncratic preferences or dislikes
(viii) never thinks laterally.

Question 2

Technograph v Mills and Rockley [1972]

Answer 2

Skilled person:

(i) carefully read the relevant literature
(ii) unlimited capacity to assimilate knowledge, but has no inventiveness
(iii) has the capacity to mosaic relevant documents.

UK hindsight - not permissible to view the question of obviousness with prior knowledge of the inventive concept.

Question 3

Catnic v Hill & Smith [1982]

Answer 3

Skilled person:

someone likely to have an interest in the subject matter of the invention

Question 4

Technip France SA’s Patent [2004]

Answer 4

Skilled person can be a team.

Shares prejudices which prevail in the art.

Question 5

Halliburton Energy v Smith [2006]

Answer 5

Skilled person can be a team.

A team of equals with no boss or leader.

Question 6

Genentech Inc’s Patent [1989]

Answer 6

The skilled person can be a team.

Question 7

Cranway v Playtech [2009]

Answer 7

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

Question 8

Virgin Atlantic v Premium Aircraft [2009]

Answer 8

Skilled person has knowledge of patent law.

Question 9

General Tire & Rubber v Firestone Tyre [1972]

Answer 9

The CGK is different from public knowledge, it is a concept derived from a commonplace approach to the practical question of what would in fact be known to an appropriately skilled addressee.

Question 10

Raychem Corp’s Patent [1988]

Answer 10

The CGK is the technical background of the skilled person against which the prior art must be considered. It is not limited to material he has memorised, but can also be material that he knows exists and can refer to when needed.

Not restricted to memorised things, but includes textbooks etc.

But not everything in standard textbooks is part of the CGK (would the skilled person consult them?)

Question 11

Mayne Pharma v Debiopharm SA [2006]

Answer 11

The CGK will include the specific knowledge and prejudices of those most closely involved with the actual field of the patent.

Question 12

Dyson v Hoover [2001]

Answer 12

CGK requires adoption of the skilled person’s mindset and not simply their knowledge.

Question 13

Teva UK Ltd & Anor v Astrazeneca AB [2014]

Answer 13

CGK includes not only information in the mind of the skilled person, but information that would be found in well known textbooks and internet databases, journal articles etc.

Question 14

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

Answer 14

The CGK can be different in different countries.

Question 15

Conor Medsystems v Angiotech [2008]

Answer 15

The basis of the inventive concept is the claims, so it is a matter of construction.

Question 16

Generics v Lundbeck [2009]

Answer 16

The inventive concept is not necessarily the same as the technical contribution.

Question 17

Asahi Medical v Macopharma [2002]

Answer 17

The decision of whether the step(s) from the prior art is obvious has to be taken without the invention in mind (cf. hindsight)

Question 18

Mölnlycke v Proctor and Gamble [1994]

Answer 18

The test for inventiveness is objective - i.e. it is not a matter of degree or of how inventive it is, only that an inventive step is present.

Question 19

Glaxo Group Ltd’s Patent [2004]

Answer 19

Mosaicing of documents 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.

Question 20

Brugger v Medic-Aid [1996]

Answer 20

UK long felt need.

A seemingly minor improvement can be non-obvious if the development was not hit upon by others, notwithstanding that there was a need for improvement and an appreciation of the need.

A route may still be an obvious one to take or try even if there are a large number of other routes.

Question 21

Pozzoli v BDM [2007]

Answer 21

UK overcoming prejudice.

Showing that apparent lion in the path is actually a paper tiger.

Question 22

Haberman v Jackel International [1999]

Answer 22

Simplicity.

If something simple was obvious it would have been done already.