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Is the invention obvious?

Commercial success and long-felt want

4.62 Evidence of a long-felt want or that the invention has been commercially successful may be a relevant consideration for inventive step (see for example Hickman v Andrews [1983] RPC 147 and PLG Research Ltd v Ardon International Ltd [1993] FSR 197). Most patents are prosecuted early in the development of an invention so commercial success may be difficult to gauge at first action. However, this may be a relevant consideration later in the examination process.

4.63 A good statement of the underpinning reasons for taking commercial success into account when assessing inventive step was given by the court in Dr Reddy’s Laboratories (UK) Ltd v Eli Lilly and Co Ltd [2008] EWHC 2345 (Pat):

“Commercial success can be a relevant secondary indicator of non-obviousness. Like all secondary indications it needs to be kept in its place. Why is it relevant at all? It is said that, when coupled with a long felt want which skilled researchers were attempting to meet, it is evidence that the claimed solution cannot have been obvious. In other words, commercial incentives would have driven those skilled in the art to the claimed solution but for one thing: it was not obvious.” [emphasis added]

4.64 The UK decision in Schlumberger Holdings Limited v Electromagnetic Geoservices AS [2009] EWHC 58 (Pat) at [77] to [78] provides a good summary as to the approach to be taken in relation to inventive step, and particularly where commercial success may be a relevant factor:

“The leading authority on the place of this evidence is the decision of the Court of Appeal in Mölnycke AB v Procter & Gamble Ltd, [1994] RPC 49 … The material points which emerge from it are:

1. The expert evidence is the primary evidence; the contemporaneous evidence is relevant, and has the merit of being untainted by hindsight, but secondary. It can be used to test the expert evidence.

2. There is a danger in getting too caught up in an investigation of what was and what was not obvious to certain identified (and even more so unidentified) individuals, because they may not all have been aware of the state of the art – the state of the art (within the meaning of the statute) is the important starting point.

3. The evidence may invite a degree of inadmissible speculation as to the inventiveness of the persons involved.

4. Commercial success (if relied on) may be attributable to novelty (want of obviousness), but there may be other factors operating. Care must be taken to ensure that is not the case.

5. The importance and weight of the evidence will vary from case to case.

In addition, where contemporaneous evidence is relied on, and it demonstrates some sort of commercial success of the idea, one must be live to the distinction between what was commercially obvious (or not obvious) and what was technically obvious (or not obvious). A new approach may find success because it has become appreciated that it has become commercially worthwhile, rather than its being appreciated as something new which will assist. If the success is attributable to the former, then the evidence does not support novelty in patent terms.”

4.65 In FE Global Electronics Pte Ltd v Trek Technology (Singapore) Pte Ltd, [2006] 1 SLR 876, the invention comprised a thumb drive device that could be plugged directly into a USB. At the time commercially available memory storage devices were usually fitted within the computer (such as ROM or RAM storage), or surface based storage devices (generally discs). The thumb drive had no moving parts which enabled the memory storage device to be more compact. The Court found that:

“In our view, Trek had an inventive concept for a new type of data storage device that was quite different from and more convenient to use than conventional data storage devices. Admittedly, all the elements required for this invention were available to those skilled in the art. Solid-state non-volatile memory was well known and USB plugs were standard. Yet before Trek applied for the patent in question, no one else thought of combining all the elements together … Having  looked at the device, some may view the invention as a simple one but simplicityhas never been a bar to inventiveness and it has been reiterated often enough that ex post facto analysis can often be unfair to inventors …” [emphasis added]

4.66 Similarly, in the UK case Schlumberger Holdings Ltd v Electromagnetic Geoservies AS [2010] RPC33, the Court of Appeal held that:

“The plain fact is that there was no real explanation of why the idea was not taken up well before the date of the Patent. The simplest explanation – indeed the only one that fits the known facts – is that the inventors hit upon something which others had missed.”

4.67 In Mühlbauer AG v Manufacturing Integration Technology Ltd [2009] SGHC45, Tay Yong Kwang J noted that when using commercial success as an indicator of inventive step one should be mindful of other factors that can contribute to commercial success:

“Where commercial success of an invention is concerned, this factor alone is not conclusive. A product that sells well is not necessarily novel or one involving an inventive step. Good advertising, marketing and pricing could also play a part. The converse is also true. As stated in Main-Line Corporate Holdings Ltd v United Overseas Bank Ltd, [2007] 1 SLR 1021 at [71]:

Something that is new and inventive does not automatically become an overnight success or ― ‘the next big thing’. Even if it is not, like the plaintiff’s Teh Kor Lak said, ― ‘a big deal’, it is nevertheless something new and inventive which, after the invention is known, others may wish they had thought of or wonder why they had never thought of it. Some patents achieve much more commercial success and are more life-changing than (many) others. The fact that the invention has not been widely adopted in the credit card industry is therefore not an adverse reflection on its inventive quality.”

4.68 Notably the Court cautioned that commercial success may be due to factors other than the inherent properties of the invention per se. Commercial success therefore needs to be carefully considered as to whether the success is indeed related to a long-felt need being satisfied rather than being the result of clever marketing or the price of the product.

4.69 Laddie J in Haberman v Jackal [1999] FSR 685, provided a number of relevant questions that may help in such a consideration:

(1) What was the problem which the patented development addressed?

(2) How long had that problem existed?

(3) How significant was the problem seen to be?

(4) How widely known was the problem and how many were likely to be seeking a solution?

(5) What prior art would have been likely to be known to all or most of those who would have been expected to be involved in finding a solution?

(6) What other solutions were put forward in the period leading up to the publication of the patentee’s development?

(7) To what extent were there factors which would have held back the exploitation of the solution even if it was technically obvious?

(8) How well had the patentee’s development been received?

(9) To what extent could it be shown that the whole or much of the commercial success was due to the technical merits of the development?

4.70 In Haberman v Jackal, the invention consisted of a “trainer cup” which had been modified to make it leak-proof. The design was relatively simple and used readily available materials. Despite a relatively small advertising budget and poorly developed aesthetics, the product was well-received in the market. Such commercial success was held as being indicative that the product satisfied a long felt want in the market.

4.71 In addition to the Haberman questions, other matters that the UK Courts have taken into account include:

(1) all matter within the scope of the claim must include the features contributing to the commercial features of the invention (Tetra Molectric Ltd v Japan Imports Ltd, [1976] RPC 547); and

(2) whether the absence of a product on the market could be attributed to a preexisting patent – for example an argument based on the commercial success of an isolated enantiomer would fail if the racemic mixture were covered by a patent that would restrict its use by others (Generics (UK) Ltd v H Lundbeck A/S, [2007] EWHC 1040).