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INVENTIVE STEP INVENTIVE STEP
• SECTION 15 (PA 1983) • An obvious invention is not inventive.
• 15. An invention shall be considered as involving an
LAW 587-IP II inventive step if, having regard to any matter which forms • Especially to a normally skilled person in the art.
part of the prior art under paragraph 14(2)(a), such • PHOSITA : person having ordinary skill in the art.
inventive step would not have been obvious to a person
having ordinary skill in the art.
THE INVENTIVE STEP REQUIREMENT
• Example of inventive steps: formulation of a way to solve a
particular new problem or unrecognized problem, or the
way of solving a known/long-standing problem, or leaving
out one step of the existing practice.
Windsurfing International Inc. v Tabur
Marine (GB) Ltd. 1985 RPC 59 Inventive Step : to whom must Inventive Step : Highly developed
the invention be obvious technology
• In Windsurfing International Inc. v Tabur Marine (GB) • Technograph v Mills and Rockley [1972] RPC 346 • General Tire v Firestone
Ltd. 1985 RPC 59, with Tabur backed financially by - “ If the art is one having a highly developed
- He is supposed to have an unlimited capacity to
French sailing fan Baron Marcel Bich, British courts technology, the notional skilled reader to whom
recognized the prior art of Peter Chilvers (12 years assimilate the contents of, it may be, scores of
specifications but to be incapable of a scintilla of the document is addressed may not be a single
old). It did not incorporate the curved wishbone person but a team, whose combined skilled would
booms of the modern windsurfer, but rather a invention…. normally be employed in that art in interpreting
"straight boom" that became curved in use. The and carrying into effect instructions such as those
courts found that the Schweitzer windsurfer boom which are contained in the document to be
was "merely an obvious extension". construed”
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Inventive Step : Knowledge imputed
Inventive Step : Highly developed Inventive Step : Knowledge
technology imputed • 2) what documents he would find in the course of
such researches as he would be expected to make;
and
• American Cyanamid v Ethicon – …addressed to a • General Tire v Firestone [1972] RPC 457. Sachs LJ; On • 3)how he would regard those documents in the light
body of technical men…. specialised knowledge of the way to that end there are here a number of
understanding and working out the instructions of a preliminary questions to be resolved. These include of common general knowledge.
technical specifications… the common general knowledge to be imputed to that
addressee; • 4) Finally, one has to consider whether the step is
• Genentech Inc’s (Human Growth Hormone) Patent - properly described as a new combination of integers
..whether a single person or such a team, the • 1) whether what had to be done to achieve the step
addressee is to be assumed to be “reasonably well was truly a matter of inventive experiment or merely or merely as a collocation of old ones.
versed in the art.. And of “standard competence a matter of that type of trial and error which forms
without being of an inventive or imaginative turn of part of the normal industrial function of such an None of these questions, some of which inevitable
mind”… addressee; overlap, is easy to resolve, and on each it is for the
appellant to establish their contention.
Identification of inventive step:
Inventive Step : Objective Test MOSAICING
Windsurfing
• Whether the step was obvious to a normally • Not allowed in assessing novelty TEST OF OBVIOUSNESS
qualified skilled addressee as opposed to the • Allowed in assessing inventive step 1. identify the inventive concept of the claim in the patent.
person who in fact claimed to be inventor or to • Technograph v Mills and Rockley [1972] RPC 346 –
2. Assume the mantle of the normally skilled but unimaginative addressee in
the art at the priority date and impute to him what was, at that date,
any particular rival of his. “when dealing with obviousness, unlike novelty, it relevant common general knowledge in the art in question
~General Tire v Firestone. is permissible to make a “mosaic” out of relevant 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
documents, but it must be a mosaic which can be alleged invention.
put together by an unimaginative man with no 4. Asked whether, viewed without any knowledge of the alleged invention,
inventive capacity” those differences constitute steps which would have been obvious to the
person skilled in the art or do they require any degree of invention?
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Indicia of Inventive Step :
Indicia of Inventive Step : Positive Indicia of Inventive Step : Neutral
negative
• Invention overcomes technical difficulties or solves a • The age of the document cited against the • Invention merely a workshop modification
technical problem which others have been trying • Invention used newly available material or known
unsuccessfully to overcome/solve inventive step
process
• Invention satisfies a long felt need and does so by • The commercial success achieved by the invention • Invention merely amounts to the substitution of well-
employing means which had long been known known equivalent and there are no technical
• Invention overcomes a relatively widespread technical difficulties in substituting those equivalents
prejudice. • Invention consists in a new use of a well-known
• Invention involves a series of steps and not merely a product employing the known properties of the
single one way from the prior art. materials.
COLLOCATION COLLOCATION
• In Williams v Nye putting together two known bits • The ‘law of collocation’, according to the patent
of machinery that carried out successive claim must be dismissed where the invention
operations in sausage making was held to be non- consists merely in the juxtaposition or association
inventive. (even non-obvious) of known devices or processes
• In International Paint Co’s Application, however functioning in their normal way and not producing
juxtaposed to the other ingredients of the mixture any non-obvious working inter-relationship.
or parts of the article, each part performs its own
function and would do so even in the absence of
the other parts.
