Is the invention obvious?

“Lying in the Road”

4.52 In some cases the solution to a particular problem is one which uses materials that are readily available on hand and which are prima facie a matter of routine for the person skilled in the art. Philips (Bosgra’s) Application [1974] RPC 241 at page 251, Whitford J considered such issues noting that the “road” itself must be one that the research worker would naturally choose to take:

“Nothing … would be more undesirable than that persons should be stopped … from using materials which it is also established would lie readily to their hand, and would come to their mind as being likely materials to use. … I think these (emulsifying) agents were obvious in this sense, indeed in the true sense of the word, that they were lying in the road, that they were there for the research worker to use, and it is quite wrong that he should be stopped from using them.”

4.53 The Court in Peng Lian Trading Co v Contour Optik Inc & Ors [2003] 2 SLR 560 cited a later restatement of this principle:

“In this regard, the words of Whitford J in Philips (Bosgra’s) Application, [1974] RPC 241 at 251 as expressed and approved by Dillon J in Genentech Inc’s Patent, [1989] RPC 147 at 243, are worthy of note:

‘[T]o render an invention obvious it was not necessary that the material in question should have been the first choice of the notional research worker; it was enough that the material was ‘lying in the road’ and there for the research worker to use.’”

4.54 In Merck & Co Inc v Pharmaforte Singapore Pte Ltd [2002] 2 SLR 515 (upheld on appeal in Merck & Co Inc v Pharmaforte Singapore Pte Ltd [2000] 3 SLR 717), the invention involved the purification of lovastatin to reduce the presence of a dimeric impurity. The claims were directed to lovastatin having lesser than 0.2% of dimeric impurity. Lai J was presented with evidence that processes disclosed in two of the patentee’s own previous patents could produce the desired impurity level and the Court held that the claims lacked novelty. The patent was also attacked on the ground that it was obvious to use techniques such as recrystallization and charcoal treatment in order to reduce impurities. The Court cited Genentech Inc’s Patent [1989] RPC 147 with favour in seeking a ‘spark of imagination’ beyond that which may be attributable to a man skilled in the art. Moreover, they stated that:

“if various techniques and processes were available which the man skilled in the art thought were worth trying out to yield beneficial results, or if the same could be said to be ‘lying in the road’ for the research worker to use (Genentech at pp 242-243), the case for ‘obviousness’ in the inventive idea is that much stronger. The same could be said of the myriad of processes … which could be applied to the purification of the Lovastatin compound.”

4.55 Notably, Lai J considered that an argument that the invention had required extensive research was not relevant in this case:

“The plaintiffs gave evidence that much effort had gone into researching processes of purification. The sweat of their labours is hardly relevant to the issue of inventive step. I am prepared to find that they embarked on a wellcharted journey, where the purification of the compound to levels of 0.2% or less was the obvious next step, given the processes that were known at the priority date.”

4.56 In general, where a claimed solution:

(1) is one of several options that the person skilled in the art would consider in solving either the identified problem or any subsequent practical difficulty;

(2) the options would at once suggest themselves to the person skilled in the art, e.g. the options are part of the common general knowledge, or clearly indicated in the prior art;

(3) there is no practical difficulty in implementing the particular solution claimed; and

(4) neither the prior art, nor the common general knowledge, teaches away from the particular solution; then an inventive step objection will apply. In this situation, the claimed solution is said to be ob via (the Latin root of the word obvious), or “lying in the road”.