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Inventive Step

General principles

4.4 A claim lacks novelty if every element or step is explicitly or inherently disclosed within the prior art. The condition of inventive step is a separate consideration which essentially involves a consideration of whether the invention, when compared to the state of the art at the priority date of the application, would have been obvious to a person skilled in the art. As a consequence, inventive step may alternatively be referred to as obviousness.

4.5 Lord Hoffmann gave an overview of inventive step in Biogen Inc v Medeva plc [1997] RPC 1 (at page 34) as follows:

“Whenever anything inventive is done for the first time it is the result of the addition of a new idea to the existing stock of knowledge. Sometimes, it is the idea of using established techniques to do something which no one had previously thought of doing. In that case the inventive idea will be doing the new thing. Sometimes it is finding a way of doing something which people had wanted to do but could not think how. The inventive idea would be the way of achieving the goal. In yet other cases, many people may have a general idea of how they might achieve a goal but not know how to solve a particular problem which stands in their way. If someone devises a way of solving the problem, his inventive step will be that solution, but not the goal itself or the general method of achieving it.”

4.6 As noted in Trek Technology (Singapore) Pte Ltd v FE Global Electronics Pte Ltd [2005] 3 SLR(R) 389, the legal test for inventive step in Singapore is as set out in Windsurfing International Inc. v Tabur Marine (Great Britain) Ltd [1985] RPC 59 (see Section D in this Chapter).

4.7 Objections should be structured to reflect these considerations. However, there is no need to specifically address each consideration if the particular issue is self-evident  from the material on file. In First Currency Choice Pte Ltd v Main-LineCorporate Holdings Ltd and Another Appeal [2007] SGCA 50, the Court considered the rationale underpinning the requirement of obviousness was as set out by Millett LJ in PLG Research Ltd v Ardon International Ltd [1995] RPC 287:

“[T]he public should not be prevented from doing anything which was merely an obvious extension or workshop variation of what was already known at the priority date …

… There are many cases in which obviousness has been held not to have been established, even though the prior art relied upon was very close … Where the prior art yields many possible starting points for further development, it may not be obvious without hindsight to select a particular one of them for the development which leads to the invention claimed. If the patentee has come up with a solution to his problem which is no more than an obvious extension or workshop variation to some piece of the prior art, he cannot have a monopoly for his solution whether or not the skilled man would be likely to have known of the prior art in question. On the other hand, if it is found that, even if he had known of it, the skilled man would not have regarded it as the obvious starting point for the solution of the problem with which he was confronted, this will usually demonstrate that his discovery was not an obvious extension or mere workshop variation of that prior art.”

4.8 Inventive step is assessed at the priority date of the claim in question. As noted by Jacob LJ:

“… one might assume that when an invention becomes obvious it must remain so thereafter. But such an assumption would be wrong: obviousness must be determined as of a particular date. There is at least one other well known example showing how an invention which might be held obvious on one date, would not be so held at a later date. That is where there has been commercial success following a long-felt want. Time can indeed change one’s perspective. The perspective the court must bring to bear is that of the skilled man at the priority date and not any earlier time.”

4.9 Inventive step is an objective determination. As noted by the Court of Appeal in Windsurfing International Inc. v Tabur Marine (Great Britain) Ltd [1985] RPC 59:

“the question of whether the alleged invention was obvious has to be answered objectively by reference to whether, at the material time (that is, immediately prior to the priority date), the allegedly inventive step or concept would have been obvious to a skilled addressee” and that “what has to be determined is whether what is now claimed as inventive would have been obvious, not whether it would have appeared commercially worthwhile to exploit it.”

4.10 The key question is whether the invention would have been obvious to a hypothetical person skilled in the art, and not whether it would have been obvious to the inventor or a particular expert in the particular technology. Moreover, the particular circumstances by which the inventor developed the invention are also not a relevant consideration. For example, it is not a relevant consideration that the inventor developed an invention in a field which is remote from their own field of expertise (see for example EP Board of Appeal decision in T36/82). Similarly the fact that a researcher has developed an invention with no knowledge of particular prior art would not be a relevant consideration (Allmanna Svenska Elektriska AB v The Burntisland Shipbuilding Co Ltd 69 RPC 63).

4.11 “Inventive step” determination is a wholly objective qualitative test and is not a quantitative test in as much as it does not involve a consideration of whether the patent discloses something sufficiently inventive to deserve the grant of a monopoly. That is, a small inventive step will suffice for the grant of a patent (Prakash J in Ng Kok Cheng v Chua Say Tiong [2001] 3 SLR 487, citing Molnlycke AB v Procter & Gamble Ltd [1994] RPC 49).

4.12 As noted by the Court in FE Global Electronics Pte Ltd v Trek Technology (Singapore) Pte Ltd [2006] 1 SLR 874, care should be taken in assessing inventiveness, particularly where the technology appears relatively simple:

“… some may view the invention as a simple one but simplicity has never been a bar to inventiveness and it has been reiterated often enough that ex post facto analysis can often be unfair to inventors”

4.13 As stated by Aldous L. J in Beloit Technologies Inc v Valmet Paper Machinery Inc [1997] RPC 489:

“The court must put on ‘the spectacles’ of the notional skilled addressee at the priority date of the patent and, using such contemporary evidence as there may be, make sure that any conclusion reached is not the result of hindsight.”

4.14 In a similar vein, Lawton L. J in Jamesigns (Leeds) Ltd’s Application [1983] RPC 68 noted that:

“[H]indsight is not the mother of invention”.