Is the invention obvious?

4.47 The last two questions in the “Windsurfing approach” require the Examiner to identify the differences that exist between the prior art and the invention in question, and then to determine whether those differences constitute steps which would have been obvious to the person skilled in the art or whether they require any degree of invention.

4.48 Examiners will often have technical skills relevant to the technology or will have acquired a good working knowledge of the areas in which they examine. As a consequence they will generally be in a position to decide based on the material before them, including application and the prior art, whether the invention possesses an inventive step. The Examiner should reassess their position once further submissions and/or evidence have been provided by the applicant. In most cases, the Examiner will not be in a position to refute expert evidence from a person working in the particular field. In such cases the Examiner is unlikely to be able to maintain an objection unless they are able to produce documentary evidence to the contrary. However, if the response from the applicant consists of assertions without any supporting material (such as documents or experimental results), then the documentary support for a rebuttal will be relatively low.

4.49 While the Windsurfing test sets a framework by which inventive step is assessed, the ultimate question is essentially the same question facing the Examiner at the start – is the invention obvious? As cautioned by Warren J in Actavis UK Ltd v Novartis AG [2009] EWHC 41:

“It is in this context always important, in assessing obviousness, as it is with novelty, to bear carefully in mind the statutory words. It is easy to find in the cases words more or less apposite to the facts of the case (e.g., would/could, motive, expectation of success, workshop variants, whether there is a reason for taking the step from the prior art) to describe how the court has made its decisions, using concepts which cannot be of universal application. Time and time again, the Courts have emphasised that the correct question is that laid down in the statute, namely whether the invention was obvious to the person skilled in the art: see in particular … Conor (Conor Medsystems Incorporated v Angiotec Pharmaceuticals Incorporated, [2008] RPC 28). In that case, Lord Hoffmann cited with approval the observations of Kitchin J in Generics v Lundbeck [2007] RPC 32 at 72 in considering how a number of different factors should be taken into account:

‘The question of obviousness must be considered on the facts of each case. The court must consider the weight to be attached to any particular factor in the light of all the relevant circumstances. These may include such matters as the motive to find a solution to the problem the patent addresses, the number and extent of the possible avenues of research, the effort involved in pursuing them and the expectation of success.’”

4.50 Various approaches have been used by the Singapore Courts to determine obviousness:

“lying in the road” (Peng Lian Trading Co v Contour Optik Inc & Ors [2003] 2 SLR 560, and Merck & Co Inc v Pharmaforte Singapore Pte Ltd [2000] 3 SLR 717)

“workshop variation” (ASM Assembly Automation Ltd v Aurigin Technology Pte Ltd and others [2009] SGHC 206)

“commercial success” and “long-felt want” (Muhlbauer AG v Manufacturing Integration Technology Ltd [2009] SGHC 45 and Trek Technology (Singapore) Pte Ltd v FE Global Electronics Pte Ltd [2005] 3 SLR 389, upheld on appeal in FE Global Electronics Pte Ltd v Trek Technology (Singapore) Pte Ltd [2006] 1 SLR 876)

“so obvious” (First Currency Choice Pte Ltd v Main-Line Corporate Holdings Ltd and Another Appeal [2007] SGCA 50)

“technical prejudice” (Muhlbauer AG v Manufacturing Integration Technology Ltd [2010] SGCA 6)

“overcoming practical difficulties” (V-Pile Technology (Luxembourg) SA and Others v Peck Brothers Construction Pte Ltd [2000] 3 SLR 358)

4.51 In addition to these tests, guidance may be taken from some UK case law, and particularly: “Why was it not done before?”, “Advantages of the invention”, “Obvious to try”, and “Selection inventions”.