Novelty and Inventive step

Question 1

What is the priority date?

Answer 1

The priority date is the date on which the novelty of the invention is judged.

Question 2

What is the prior art?

Answer 2

Something that exists in the state of the art before the priority date of an application.

Question 3

When does the prior art anticipate an invention? (UK)

Answer 3

When it provides an enabling disclosure.

Asahi’s Application [1991] RPC 485

Question 4

What are the two basic elements for novelty? (UK)

Answer 4

Enablement and disclosure.

Synthon v. SmithKline [2005] UKHL 59

Question 5

How is a public disclosure defined? (UK)

Answer 5

A disclosure is made public if it is disclosed to at least one member of the public free in law and equity to use it.

Question 6

Is it necessary to see a disclosure for it to be considered disclosed? (UK)

Answer 6

It is not necessary to actually see an invention for it to be made public, this is the library book analogy.
Lux Traffic v. Pike signals [1993] RPC 107

However, there may be a difference between and observing an invention for example if it is disclosed to a toddler or an empty lecture theatre it is not considered to be disclosed.
Folding Attic Stairs v. Loft Stairs Company [2009] EWHC 1221 (Pats).

E Mishan & Sons v. Hozelock [2019] EWHC 991 (Pat)

Question 7

When should a document be construed? (UK)

Answer 7

At the priority date.
General Tire and Rubber v. Firestone Tyre [1972] RPC 457
SmithKline Beecham v. Apotex [2005] FSR 23

Question 8

What is the infringement test for disclosure? (UK)

Answer 8

If using an earlier invention necessitates infringement of the later patent, the later patent is not novel. Patent infringement does not require awareness of infringement. Simply performing the infringing act is enough.
Lord Hoffman, Synthon v. SmithKline [2005] UKHL 59, [22]
Qualified in Eli Lily v. Actavis UK [2017] UKSC 48, Generics (UK) Ltd (t/a Mylan) v. Yeda [2017] EWHC 2629 (Pat) to exclude equivalents.

Question 9

How is enablement defined? (UK)

Answer 9

Enablement means that the ordinary skilled person would have been able to perform the invention which satisfies the requirement of disclosure.
Lord Hoffman, Synthon v. SmithKline [2005] UKHL 59 [26]

Enablement for novelty therefore equates with sufficiency in the application itself: see section 14(3) and 72(1)(c) of the PA 1977.
But… Schlumberger Holdings Ltd v. Electromagnetic Geoservices AS [2010] EWCA Civ 819 (the art might change by reason of the patent and so the skilled person may be different)

Requirements for enable will vary depending on the invention itself.

The disclosure does not need to be so totally enabling as to avoid “the ordinary methods of trial and error which involve no inventive step and generally are necessary in applying any discovery to producing a practical result.
Van der Lely v. Bamfords [1963] RPC 61, 71, HL

Question 10

How does the UK approach Mosaicking?

Answer 10

Each document must be interpreted on its own and so it is not allowed to piece together prior art documents to destroy novelty.
Von Heyden v. Neustadt (1880) 58 LJ Ch. 126

But where a series of papers refer to each other so that a person reading one can find each of the others, this is not an impermissible mosaic and can be used to attack novelty.
Sharpe & Dohme v. Boots Pure Drug (1927) 44 RPC 367

Documents cannot be combined unless there is positive evidence that they are incorporated by reference.

Question 11

What does Article 54 EPC refer to?

Answer 11

(1) An invention shall be considered to be new if it does not form part of the state fothe art.
(2) The state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use in any other way, before the date of filing of the European patent application.

Question 12

When is novelty assessed? (EP)

Answer 12

Novelty is assessed at the beginning of the date of filing (12:01am).

Thus, something filed on the priority date (even if it was filed before the application in question, does not anticipate.
T 123/82 Polyurethane Plastics / BAYER [1979-85] EPOR B575 at [r 9]

Question 13

When are prior art documents construed? (EP)

Answer 13

Non-patent documents are construed at the date of their publication.
T 205/91 Continuous production of inorganic based material / FRANHAUSER-GELLSCHAFT (unpublished*) 16 June 1992 at [r 4.4]

Patent documents are construed at the date of filing of the earlier application.
T 233/90 Magnetic recording medium / KONICA (unpublished*) 8 July 1992 at [r 3.3]

Question 14

How does the EPO approach mosaicking?

Answer 14

The EPO adopts the same approach as the UK.

It is not permissible to combine separate items belonging to different embodiments described in one and the same document unless such combination has been suggested.
T 305/87 GREHAL / Shear [1991] OJ EPO 429

If a document refers explicitly to another document as providing more detailed information on certain features, the teaching of the latter is to be regarded as incorporated into the document containing the reference. Provided that the document referred to was available to the public on the publication date of the document containing the reference.
T 153/85 AMOCO CORP / Alternative claims [1988] OJ EPO1

Question 15

When is an invention considered to be disclosed?

Answer 15

When all elements of the claimed invention have been disclosed to one member of the public.
G 2/88 Friction reducing additive / MOBIL OIL III [1990] OJ EPO 93

No requirement that it is disclosed to a minimum number of people (cf trade secrecy)
T 165/96 Prefading / CAYLA [2002] EPOR 93

No obligation of secrecy.
T 482/89 Single sales / Telemechanique [1992] OJ EPO 646

The sale of an article to a member of the public is sufficient to amount to disclosure.
T 482/89 Power supply unit/ Telemechanique [1992]OJ EPO 646 at [r 3]

The purchaser does not need to be a skilled person.
T 969/90 Tube electronique / Thompson (unpublished*) 12 May 1992

Question 16

Where can a disclosure be made? (EP)

Answer 16

Documents, meetings, drawings, internet. There are different standards of proof depending on the nature of the disclosure, for example a low standard will be needed for a document and a high standard for an oral disclosure.

Question 17

How is prior art construed? (EP)

Answer 17

The disclosure must be enabling (meaning enabling a skilled person to perform the invention).
T 206/83 Enabling disclosure/ICI [1987] OJ EPO 5

The invention must therefore be disclosed clearly and unambiguously.
T 450/89 Electroless plating/ENTHONE [1994] EPOR 326

It may also be clearly and unambiguously implied in the disclosure.
T 59/86 Friction reducing additive/MOBIL OIL IV [1991] OJ EPO 561

It may also be implicitly revealed if when carrying out the teaching of the prior art document, the skilled person would inevitably arrive at the claimed invention.

Question 18

Is actual sight of an invention necessary for it to be considered to be disclosed? (EP)

Answer 18

A document which is unpublished but available on request amounts to disclosure for the purposes of novelty.
T 61/95 MONFORTS (unpublished)

It is necessary to show that there was a realistic possibility that a skilled person saw the disclosure, it is not necessary to show they actually saw it.
T 84/83 Rear view mirror / LUCTENBERG [1979-1985] EPOR C796

But disclosure to person who does not understand the invention is not making available to the public.
T 877/90 T-cell growth factor/HOOPER [1993] EPOR 6

Something does not anticipate when it was made secretly and secrecy can exist in both large and small groups.
T 830/90 Secrecy / MACOR [1994] OJ EPO 713

Question 19

What does the identity test require? (EP)

Answer 19

There must be complete correspondence between all technical features of the application in suit and the prior art.
T 177/83 Fibre composites / BAYER [1979-85] EPOR C884

Correspondence of the essential features is therefore not enough.
T 411/98 Training Pant / Kimberly-Clark [2002] EPOR 31
A skilled person can, as a result of the common knowledge, correct minor errors if they do not affect the clarity or completeness of the disclosure.
T 171/84 Trial and error / Air Products [1986] OJ EPO 95

Question 20

Which disclosures are excluded from being prior art? (UK)

Answer 20

Unpublished patent applications: Section 2(3) of the Patents Act 1977

For a patent document to count as prior art for novelty, it has to have been both filed and published on the priority date of the application in question. A patent application must have the capacity to become a UK patent e.g. it must be filed at the UKIPO, EPO or WIPO.

Additionally, in the event of a breach of confidence, a 6 month priority is allowed, and there is a 6-month priority allowed after certain international conferences (although this is rare and applies to an extremely limited number of conferences).

Question 21

Which disclosures are excluded from being prior art? (EP)

Answer 21

Article 54(3) EPC
(3)	Additionally, the content of European Patent Applications as filed, of which the dates of filing are prior to the date referred to…. and were published… on or after that date, shall be comprised in the state of the art.

Additionally, in the event of a breach of confidence where there is evidence of abuse, a 6 month priority is allowed, and there is a 6-month priority allowed after certain international conferences (although this is rare and applies to an extremely limited number of conferences).

Question 22

What is the basic test for inventive step? (UK)

Answer 22

Section 3 PA 1977
An invention shall be taken to involve an inventive step if it is not obvious to a person skilled in the art, having regard to any mater which forms part of the state of the art by virtue only of section 2(2) above (and disregarding section 2(3) above).

Question 23

What is the basic test for Inventive step? (EP)

Answer 23

Article 56 EPC
An invention shall be considered as involving an inventive step, having regard to the state of the art, it is not obvious to a person skilled in the art. If the state of the art also includes documents within the meaning of Article 54(3) EPC, these documents are not to be considered in deciding whether there has been an inventive step.

Question 24

What is the old “Windsurfing” test?

Answer 24

There are four steps for assessing whether something is obvious:

(1) the first is to identify the inventive concept embodied in the patent in suit;
(2) next, the court has to assume the mantle of the person skilled in the art at the priority date and to impute to him what was, at the time, common general knowledge in the art in question;
(3) the third step is to identify what, if any differences exist between the matter cited in the prior art and the claimed invention; and
(4) 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 person or whether they require any degree of invention.

Question 25

What legal test resulted from Pozzoli v. DBMO?

Answer 25

(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 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?
Pozzoli v. DBMO [2007] EWCA Civ 588 [23]

Question 26

What are the key characteristics of the person skilled in the art?

Answer 26

(1) He is deemed to have looked at and read publicly available documents and to know of public uses in the prior art.
(2) He understands all languages and dialects.
(3) He never misses the obvious nor stumbles on the inventive.
(4) He has no private idiosyncratic preferences or dislikes.
(5) He never thinks laterally.
(6) He differs from all real people in one or more of these characteristics.
Pfizer’s Patent [2001] FSR 16
Lord Reid, Technograph v. Mills & Rockley [1972] RPC 346, 355
Per Jacob LJ, Technip France SA’s Patent [2004] RPC 46
Pumfrey J, Halliburton Energy v. Smith [2005] EWHC 1623 par 39
Actavis group v. ICOS [2019] UKSC 15

The skilled person can be a team.
Genetech Inc’s Patent [1989] RPC 147

The team will need to be identified before construction, obviousness etc. Cranway v. Playtech [2009] EWHC 1588 (Pat)

The direction of research might be determined by a particular researcher or leader.
Actavis group v. ICOS [2019] UKSC 15
The skilled person would have some knowledge of patent law. The assumption is that if he didn’t know how a claim would be construed, he would someone who did.
Virgin Atlantic v. Premium Aircraft [2009] EWCA Civ 1062

Question 27

How is the common general knowledge of the skilled person identified?

Answer 27

Common general knowledge is 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.
General Tire & Rubber v. Firestone Tyre [1972] EPC 457 482

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 mind. 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 other work.
Laddie J, Raychem Corp’s Patent [1988] RPC 31, 40

Question 28

To what prejudices is the skilled person susceptible?

Answer 28

Those prejudices that are commonplace in the art. (e.g. bacterial cause of stomach ulcer analogy).
Mayne Pharma v. Debiopharm SA [2006] EWHC 1123 (Pat)

To assess inventive step, you need to adopt the mindset of the skilled person, not simply the knowledge.
Dyson v. Hoover [2001] EWCA Civ 1440

Question 29

What is included in the Common General Knowledge?

Answer 29

Not restricted to things memorised things but includes things which would be in text books etc…. but not everything in standard textbooks is part of the CGK
Raychem Corp’s Patent [1988] RPC 31

The question is whether the skilled person would consult the text in the relevant respect.
Qualcomm v. Nokia [2008] EWHC 329 (Pat)

Inlcudes online databases etc. which are part and parcel of routine information sharin techniques.
Teva UK Ltd & Anor v. Astrazeneca AB [2014] EWHC 2873 (Pat)

It must be proven to be CGK in the UK (or Europe) as the question is whether the patent is valid in said territories.
Generics (UK) Ltd (t/a Mylan) v. Warner-Lambert Company LLC [2015] EWHC 2548 (Pat)

Question 30

How do you identify the inventive concept of a claim?

Answer 30

The basis of the inventive concept is the claims.

So it is a matter of construction.
Conor Medsystems v. Angiotech [2008] UKHL 49

It is not the same as a technical contribution.
Generics v. Lundbeck [2009] UKHL 12

Question 31

How do you 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 claims as construed?

Answer 31

This is identifying the gap between the prior art and the invention.

The court has to adopt the mantle of the skilled person and decide whether the step or steps from the prior art to the claimed invention were obvious. That decision has to be taken without the invention in mind and through the eyes of the skilled person.
Asahi Medical v. Macopharma [2002] EWCA Civ 466

Question 32

How is inventive step assessed? (UK)

Answer 32

(1) (a) Identify the notional person skilled in the art;
(b) Identify the relevant common general knowledge;
(2) Identify the general 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 claim as construed; and
(4) Viewed without any knowledge of the alleged invention as claimed, do those steps constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?

Question 33

What are the key steps for the problem-solution approach?

Answer 33

(1) Determining the closest prior art;
(2) Establishing the objective technical problem; and
(3) 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
T 1/80 Carbonless copying paper/BAYER [1981] OJ EPO 206

Question 34

What are the key characteristics of the person skilled in the art? (EP)

Answer 34

The person is an expert in the technical field.
T 641/00 Two identities/COMVIK [2003] OJ EPO 352

The person in notional (a legal construct).
T 5/81 Hollow thermoplastics/SOLVAY [1982] OJ EPO 249

The person possesses no inventive capacity.
T 39/93 Polymer powders/ALLIED COLLOIDS [1997] OJ EPO 134

Where the skilled person practices a trade is immaterial (i.e. Ireland, Japan, UK).
T 426/88 Industrial combustion/LUCAS [1992] OJ EPO 2

The skilled person might consult other people.
T 164/92 Computer Program/BOSCH [1995] OJ EPO 305

The skilled person might be a team.
T 164/92 Computer Program/BOSCH [1995] OJ EPO 305

The skilled person will have specific traits of the technical field in question, for example they might be conservative and unwilling to take risks (e.g. biotech)
T 455/91 Expression of yeast/GENETECH [1995] OJ EPO 684

Question 35

How is the Common General Knowledge assessed? (EP)

Answer 35

The person skilled in the art not only has the basic general knowledge of a particular field of technology but also has 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 patent applications

However, the skilled person will not undertake a search that requires undue effort and the information must be unambiguous and usable in a direct and straightforward manner without further research work.

Question 36

How is the closest prior art identified? (EP)

Answer 36

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.
T 606/89 Unilever/Particulate detergent composition (unpublished 1990)

The age of the prior art is usually irrelevant (unless the skilled person would ignore it)
T 334/92 Benzodioxane derivatives/EISAI (unpublished) 23rd March 1994

It is not relevant whether the prior art has been commercially exploited.
T 254/86 Dye/SUMITOMO [1989] OJ EPO 115

Question 37

What are some key features of the objective technical problem?

Answer 37

The OTP derived during examination may not be what the applicant presented as the problem in his application.
Guidelines for Examination in the EPO

The EPO can reformulate the problem.
T 149/93 Retinoids/KLIGMAN II (unpublished) 23th March 1995

The problem should be formulated without hindsight.
T 229/85 Etching metal services/SCHMID [1987] OJ EPO 237

The problem can be formulated to include non-technical aspects.
T 641/99 Two identities/COMVIK [2003] OJ EPO 352

How is inventive step assessed following application of the problem-solution approach? (EP)
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 on the hope of solving the objective technical problem or in expectation of some improvement or advantage.
T 2/83 Simethicone/RIDER [1979-85] EPOR C715

Question 38

When is a bonus effect considered inventive? (UK &EP)

Answer 38

Bonus effect: is not considered inventive if the unexpected effect is simply an enhancement of the expected effect or is the bonus effect results from a step that would have to be taken anyway, and the extra effect has to be as (or more) important than the obvious effect).

Where an invention would be obvious to a person a bonus or unforeseen effect does not change that.
T 21/81 Electromagnetic operated switch/ALLEN BRADLEY [1983] OJ EPO 15

A surprising effect is patentable, however, this is where the discovered effect is more important than the obvious outcome.
T 227/89 Flame retarding polyester/TORAY [1993] EPOR 107

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.
Napp Pharmaceutical Holdings Ltd v Sandoz [2009] EWCA Civ 252

So only where the invention is non-obvious for reasons other than the unexpected advantage will it survive the attack.
Degussa Hall v Comptroller [2004] EWHC 3213

Question 39

What is are the key features of long-felt need? (UK&EP)

Answer 39

Long-felt need is proven by the age of the prior art and it must be supported by other facts.
T 79/89 T 79/82 Abschirmung elektromagnetischer (unpublished)

It is necessary to show there is a general need in the industry.
T 605/91 Railroad line bed (unpublished)

It is only when the answer to the question “why was this not developed earlier” is a likely and reasonable explanation 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.

Question 40

How can prejudice be overcome? (UK&EP)

Answer 40

Is there a generally accepted technical prejudice which can be substantiated by facts?
T 300/90 Stalblizing tumor necrosis (unpublished)

The prejudice must be shown by the person skilled in the art (and not someone in a related art)
T 62/89 INT.STAND ELECTRIC (unpublished)

A work around the prejudice is not the same as overcoming it and doing so cannot make something inventive.
T 69/83 BAYER [1984] OJ EPO 357

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.
Pozzoli v BDM [2007] EWCA Civ 588

Question 41

When is something considered “obvious to try”? (UK&EP)

Answer 41

Something is obvious if a person would have carried it out with an expectation of success
T 2/83 Simethicone/RIDER [1984] OJ EPO 265

There must have been a reasonable expectation (not merely hope of success)
T 149/93 Retinoids/KLIGMAN II (unpublished)

There is a stricter test for simple routine tests(so called try and see) as a skilled person would simply carry those out.
T 91/88 Antiviral/WELLCOME (unpublished)

The existence of alternative or multiple paths of research will often be an indicator that the invention contained in the claim or claims was not obvious
Actavis Group v ICOS Corporation [2019] UKSC 15

A route may still be obvious 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.
Laddie J, Brugger v Medic-Aid [1996] RPC 635, 661

Question 42

When is commercial success relevant for assessment of inventive step ? (UK & EP)

Answer 42

In general, commercial success of an invention does not indicate inventiveness.
T 91/83 Plug for affixing screws/HASMONAY [1979-85] EPOR C807

Small company without a sales team is more likely to be able to prove commercial success that a huge company.
T 106/84 Packing Machine/MICHAELSEN [1985] OJ EPO 132

Success in a short period of time in a number of countries might suggest inventiveness
T 626/96 Commercial success/WATER TAP (unpublished)

It is necessary to exclude other factors such as market monopoly, advertising or selling technique
T 478/91 Pulley system/AUBECQ (unpublished)

The commercial success of an invention can, in rare instances be indicative of inventiveness
Samuel Parkes v Cocker Bros (1929) 46 RPC 241 (railway sleepers)

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.
Pfizer Ltd Patent [2001] FSR 16, [63-4]

Question 43

How is the reaction of experts relevant for the assessment of inventive step? (UK)

Answer 43

A further indication of whether an invention is obvious or not is the reaction of expert at the time of the invention
Chiron v Organon Teknika (No 3) [1994] FSR 202 at 223

An inventor receiving a major award or prize for something related to the patent is good secondary evidence of its inventiveness
Regeneron Pharmaceuticals v Genentech [2012] EWHC 657 (Pat) at [146]

A presentation being poorly received and the conclusions challenged can be powerful evidence (but not conclusive) that something is not obvious as the expert did not believe the results
Generics (t/a Mylan) v Wellcome Foundation [2013] EWHC 148 (Pat)