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Is the invention obvious?

Advantages of the invention

4.80 Where the invention has no advantages, or is even disadvantageous, it could be argued that it would not be obvious to the skilled person. Nevertheless, if the invention is one which a skilled person would consider, then it will lack inventive step (Technical Board of Appeal of the EPO in Decision T119/82). However if the invention has an unexpected advantage, then it may constitute a valid “selection”. Similarly if the skilled person would expect the invention to be disadvantageous but this is in fact not the case, then it may be non-obvious. “Selection” inventions will be dealt with below.

4.81 If the prior art leads directly to an invention then it is not made inventive by any additional advantage obtained. In Inventa AG’s Application [1956] RPC 45, a process of spinning nylon which had (before the introduction of nylon) been disclosed for spinning artificial filaments was held to be obvious despite having an additional advantage. In particular, no further modification of the process was required to secure this advantage. Similarly, in Union Carbide Corporation (Hostettler’s) Application [1972] RPC 601 at page 609, Whitford J stated that “if in fact the step taken was an obvious step, it remains an obvious step however astonishing the result of taking it may be”.

4.82 In general, an otherwise obvious combination is not saved from a finding of obviousness by some unexpected advantage caused by an unpredictable co operation between the elements of the combination (see Glaxo Group Ltd’s Patent [2004] RPC 43).