Novelty and IS/Secondary Indications of IS for paper A

Question 1

What is section (1) PA 1977?

Answer 1

Section 1 PA 1977
(1) A patent may be granted only for an invention in respect of which the following conditions are satisfied, that is to say—

(a) the invention is new;
(b) it involves an inventive step;
(c) it is capable of industrial application;
(d) the grant of a patent for it is not excluded by subsections (2) and (3) or section 4A below;

Question 2

When will prior art anticipate?

and what constitutes a disclosure?

what constitutes enablement?

(UK)

Answer 2

Prior art anticipates if it affects the novelty.

Must provide an enabling disclosure (so needs 2 elements: enablement and disclosure).

What constitutes disclosure:

(1) available to at least one member of the public who was free in law and equity to use it
(2) no need to prove anyone saw the discloser, but seeing may be different to observing (i.e. do they understand it?)

What constitutes enablement?

(1) ordinary skilled person is able to perform the invention to satisfy the requirement of disclosure.
(2) but does not need to be totally enabling–room for trial and error.

Question 3

What is ‘mosaicking’ regarding novelty?

UK/EP

Answer 3

Can’t piece together prior art documents (mosaicking) to destroy novelty–each document must be interpreted on their own.

Exception if a series of papers refer to each other (then combination has been “suggested”).

Question 4

What does section 1(2) and 1(3) and 1(4) PA say?

Answer 4

Section 1
(2) It is hereby declared that the following (among other things) are not inventions for the purposes of this Act, that is to say, anything which consists of—

(a) a discovery, scientific theory or mathematical method;
(b) a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever;
(c) a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer;
(d) the presentation of information;

but the foregoing provision shall prevent anything from being treated as an invention for the purposes of this Act only to the extent that a patent or application for a patent relates to that thing as such.

(3) A patent shall not be granted for an invention the commercial exploitation of which would be contrary to public policy or morality.
(4) For the purposes of subsection (3) above exploitation shall not be regarded as contrary to public policy or morality only because it is prohibited by any law in force in the United Kingdom or any part of it.

Question 5

What does section 2(1) and (2) PA say?

Answer 5

Section 2
(1) An invention shall be taken to be new if it does not form part of the state of the art.

(2) The state of the art in the case of an invention shall be taken to comprise all matter (whether a product, a process, information about either, or anything else) which has at any time before the priority date of that invention been made available to the public (whether in the United Kingdom or elsewhere) by written or oral description, by use or in any other way.

Question 6

What does section 3 PA say?

Answer 6

Section 3
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 matter which forms part of the state of the art by virtue only of section 2(2) above (and disregarding section 2(3) above).

Question 7

What are the stages of the Pozzoli/Windsurfing test?

Answer 7

This is the GB approach to assessing novelty.

(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 8

For (1)(a) of Pozzoli/Windsurfing, what are the characteristics of the person skilled in the art?

Answer 8

The skilled person in the art is a notional person with no inventive capabilities. He:

(1) 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 invention;
(4) Can be a team;
(5) Can ask a notional patent attorney about patent law.

Question 9

What is cgk for (1)(b) of Pozzoli?

Answer 9

(1) The common general knowledge is the technical background of the notional man in the art against which the prior art must be considered.
(2) Requires adoption of skilled person’s mindset and not just their knowledge.
(3) Not just stuff in skilled person’s mind (i.e. memorised information)–he is able to look up stuff in textbooks.
(4) cgk will include prejudices of those most involve in field patent is concerned with

Question 10

How to do stage (2) of Pozzoli?

Answer 10

We need to identify the inventive concept.

From ‘Generics v Ludbeck [2009]:

(1) “inventive concept” not the same as “technical contributor”;
(2) “inventive concept is concerned with the identification of the core (or kernel or essence) of the invention–the idea of principle which entitles the inventor’s achievement to be called an inventive.
(3) 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?

Question 11

What is ‘mosaicking’ regarding inventive step?

UK/EP

Answer 11

When dealing with obviousness, can ‘mosaic’ out of the relevant documents (not so for novelty).

BUT:

(1) it must be a mosaic which can be put together by an unimaginative man with no inventive capacity.
(2) can mosaic together, unless it can be shown that the skilled person, confronted with a particular citation, would turn to come other citation to supplement the information provided by the first.

Question 12

What is novelty at the EPO?

Answer 12

Article 54 EPC

(1) An invention shall be considered to be new if it does not form part of the state of the 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, or in any other way, before the date of filing of the European patent application.

Question 13

How are prior art documents construed?

Answer 13

(1) Non-patent documents are construed at date of their publication;
(2) Patent documents are construed at date of filing earlier application

Question 14

Who must a document be made available to in order to constitute a disclosure?

(EP)

Answer 14

(1) disclosure to at least one member of public (no minimum requirement)
(2) does not matter how info was made available (documents, meetings, internet–but each require a different standard of proof at EPO)
(3) disclosure must be enabling (disclosed clearly and unmistakably);
(4) a document which is unpublished by available on request amounts to disclosure for purposes of novelty (MONFORTS)
(5) trial and error using common knowledge is allowed

Question 15

What is the EPO approach to inventive step?

Answer 15

From ‘Carbonless Copying Paper/BAYER’:

(i) determine the closest prior art;
(ii) establish the “objective technical problem” to be solved;
(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.

Question 16

Who is the skilled person (at EPO)?

Answer 16

(1) expert in technical field;
(2) the person is notional (legal construct);
(3) the person possesses no inventive capabilities;
(4) has no inventive capacity;
(5) might consult other people;
(6) where he practices his trade is immaterial;
(7) he might be a team.

Question 17

What is the common general knowledge of the skilled person (EPO)?

Answer 17

From ‘Chimeric Gene/BAYER’:

Decision sets out aspects to consider for correctly assessing the cgk of the person skilled in the art:

(a) includes basic general knowledge of a particular field and ability to look up such knowledge in textbooks etc.
(b) no undue effort should be made in searching for the above knowledge of (a)
(c) information found must be unambiguous and usable in a direct and straightforward manner without doubts or further research work.

Question 18

How is the closest prior art defined in the problem-and-solution approach?

Answer 18

According to ‘Unilever/Particulate detergent composition’:

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.

But note (not in decision):

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

not relevant is prior art hasn’t been commercially exploited

Question 19

What must be kept in mind in the third step of problem and solution approach?

Answer 19

Third step: (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.

From ‘Simethicone’:
it is not a question of whether the person skilled in the art could have arrived at the invention claimed by adapting the closest prior art; the question is whether he would have done so because the prior art incited him to do so

Question 20

What are the secondary consideration of inventiveness?

Answer 20

The following are considered secondary indications of inventiveness (as the assessment is so difficult indicators can be helpful). HOWEVER, even when these are found, it does not mean something is inventive.

(1) bonus effect
(2) long-felt need
(3) overcoming prejudice
(4) simplicity
(5) inventive without ex post facto analysis (hindsight)
(6) if obvious to try would have done so
(7) commercial success
(8) reactions of experts (UK only?)

Copying: 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.

Question 21

What is meant by the secondary indicator ‘bonus effect’?

Answer 21

When an invention provides an unexpected or surprising result that would not have been expected from the prior art, this can indicate an inventive step.

Howveer,
producing the effect that was inventive is to a far greater extent not inventive
where a person is lead down a one-way route, a bonus effect does not make something patentable.

Therefore
to indicate inventiveness, the extra effect has to be just as important or more important than the obvious effect

Question 22

What is the EPO approach to ‘bonus effect’?

Answer 22

where an invention would be obvious, a bonus or unforeseen effect does not change that

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

Question 23

what is the Uk approach to ‘bona effect’?

Answer 23

This argument is only successful where the invention is non-obvious for reasons other than the unexpected advantage

Question 24

What is EPO approach to ‘long felt need’?

Answer 24

must show that there is a general need int the industry

long felt need is not indicated by the age of the prior art but must be supported by other facts

Question 25

what is UK approach to ‘long felt need’?

Answer 25

‘Brugger v Medic-Aid’

the age of the 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 was surprising

Question 26

what is EPO approach to ‘overcoming prejudice’?

Answer 26

must be generally accepted prejudice substantiated by facts

prejudice must be shown by person skilled in the art

a work-around the prejudice doesn’t count–must overcome it

Question 27

what is the UK approach to ‘overcoming prejudice’?

Answer 27

‘Pozzoli v BDM’:

a patentee who has contributed something new by showing that, contrary to the mistaken prejudice, the idea will work or is impractical has shown something new (and non-obvious).
in other words, he must show that an apparent lion in the path is merely a paper tiger

Question 28

when does the secondary indicator ‘simplicity’ apply?

Answer 28

Think this only applies to UK.

‘Haberman v Jackel International’:

“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”

Question 29

what is the EPO approach to ‘hindsight’?

Answer 29

From Guidelines for Examination in the EPO:

it should be remembered that an invention which at first sight appears obvious might in fact involve an inventive step (this examiner must be wary of ex post facto analysis).

Question 30

what is the UK approach to ‘hindsight’?

Answer 30

‘Westinghouse v Braulik’ also stresses the need to be wary of ex post facto analysis–both officers see this an compelling argument

Question 31

What is the EPO approach to ‘obvious to try’?

Answer 31

(1) solution is obvious if there is an expectation of success–but mere hope of success does not count
(2) there is a stricter test for simply routine tests as a skilled person would simply as a matter of course carry those out

Question 32

what is Uk approach to obvious to try?

Answer 32

(1) solution is obvious if there is an expectation of success–but mere hope of success does not count
(2) fact that there are multiple alternative obvious route to take is irrelevant (Brugger v Medic-Aid)

Question 33

what is meant by combination inventions re secondary indications of inventiveness?

Answer 33

UK only

From ‘British Celanese v Courtauld’:

merely placing machines side by side with each performing its own function (like a sausage machine) is not inventive. there has to be some working interaction between them that produces a new or improved result

Question 34

What is EPO approach to commercial success?

Answer 34

In general, commercial success is not an indicator os inventiveness

From ‘Packaging Machine/MICHAELSEN’: small company with small sales team more likely to suggest commercial success than huge company

‘Commercial success/WATER TAP: success in a short period of time in a number of countries might suggest inventiveness

‘Pulley System/AUBEQUE’: it is necessary to exclude other factors such as marketing monopoly, advertising or better selling technique

Question 35

What is UK approach to commercial success?

Answer 35

indicative in rare circumstances

From ‘Pfizer Patent Ltd’, commercial success comes into its own as a secondary indication of inventiveness where both the relevant prior rat has been available and the need for a solution to a known problem has been sought for a long time.

Question 36

what constitutes ‘reaction of experts’ as a secondary indicator of inventiveness?

Answer 36

UK only

(1) inventor receiving a major award or prize in relation to invention is a good secondary indicator
(2) non-obvious also suggested where experts are sceptical to believe the results