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Is the invention obvious?

Technical prejudice

4.74 The common general knowledge is a key consideration in the assessment of inventive step. Importantly, the Examiner should consider what the skilled person would consider doing, but also what the skilled person would be prejudiced against doing. An invention may be regarded as non-obvious if it goes against the generally accepted views and practices in the art (see for example, Dyson Appliances Ltd v Hoover Ltd [2001] RPC 26).

4.75 Examples where this may be a determining factor include;

(1) if the common general knowledge was such that the skilled person did not perceive a problem with the prior art.

(2) if certain materials or techniques would be considered by the skilled person as unsuitable for a particular purpose and the inventor has found that this prejudice is not well-founded.

(3) If a certain step in a method or component in an apparatus was considered essential, but the inventor has found that it may be omitted.

4.76 The technical prejudice must be one which is commonly shared in the art: that is, the prejudice must be sufficiently widespread for it to be attributed to the notional person skilled in the art. Thus if views in the art are divided in relation to a particular point, then it is not a prejudice that may be said to be widely held in the art. For example in Glaxo Group’s Patent [2004] RPC 43, there was significant dispute in the art in relation to the use of β2-antagonists in the treatment of asthma. The Court held that as a consequence of this dispute the technical prejudice could not be considered sufficiently widespread to be attributed to the skilled person.

4.77 Similarly, a prejudice held in one group may be in conflict with the practices of another. For example, in Ancare New Zealand Ltd’s Patent [2003] RPC 8 the invention involved a dual treatment for round worm ad tapeworm. The applicant argued that the invention lay in using an agent against tapeworm since there was a prevailing scientific prejudice against treating lambs for tapeworm. However, the Court heard that despite the scientific views it was common practice for farmers to treat lambs for tapeworm. The Court held that the invention was obvious since:

“the fact that scientific opinion might have thought that something was perfectly useless did not mean that practising it, or having the idea of making a preparation to do it, was an inventive step. Otherwise, anyone who adopted an obvious method for doing something which was widely practised but which the  best scientific opinion thought was pointless could obtain a patent.”

4.78 Notably the invention must lie in recognising that a prejudice is ill founded – there will be no invention in simply accepting the disadvantages that underpin the prejudice. For example, the prevailing view in the art may be that a ferrous metal should not be used in a particular reactor because it is susceptible to corrosion under the reaction conditions. An invention employing such a reactor would not be inventive if it was simply accepting that it would have a reduced lifespan. Similarly if the prejudice against a particular material is founded on it being unviable or expensive and a subsequent development makes the material more readily available or cheaper, then an invention merely taking advantage of that development would not be inventive. Of course the improved process of making the material itself may be patentable.