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Is the invention obvious?

Workshop variation

4.57 If a claim is a “mere workshop improvement” over the prior art, it will lack an inventive step. This is implicit in the definition of a person skilled in the art as a person who has the skill to make routine workshop developments but not to exercise inventive ingenuity or think laterally (see Pfizer Ltd’s Patent [2001] FSR 16). However, whether something constitutes a mere workshop improvement or modification may be difficult to determine:

“Nobody, however, has told me, and I do not suppose that anybody ever will tell me, what is the precise characteristics or quality the presence of which distinguishes invention from a workshop improvement” (Samuel Parkes & Co Ltd v Cocker Brothers Ltd, [1929] 46 RPC 241).

4.58 Some guidance was given by Laddie J in Hoechst Celanese Corporation v BP Chemicals Limited [1997] EWHC 370 (Pat) as follows:

“… mere workshop modifications, none of which would be expected to produce significant technical or commercial benefits are still obvious. To adopt an example sometimes given by Jacob J., if it is known to make a 5 inch plate, it is obvious to make a 51/4 inch plate. Technicians and businessmen frequently want to make trivial variations in established or known products. Similarly if the prior art discloses two wooden parts held together by screws it would be obvious to glue them, even if so doing would not be expected to advance the industry. The notional addressee is likely to want to use materials readily at hand to make essentially the same thing as is disclosed in the prior art. That is sufficient motivation and the use of those materials is, accordingly, obvious.”

4.59 In ASM Assembly Automation Ltd v Aurigin Technology Pte Ltd and others [2009] SGHC 206, the invention involved an apparatus and method for automatically placing an array of solder balls onto a substrate. The Court found that the claims were lacking in novelty, but nevertheless further considered their inventiveness. Notwithstanding that Tan J concluded that the evidence at trial showed that ASM’s patent involved nothing more than an “aggregation of known features in the art”, the key matter was considered under the guise of workshop improvement. Tan J referred to Shaw v Burnet & Co [1924] 41 RPC 432 and Curtis & Son v Heward & Co [1923] 40 RPC 53 as being instructive as to workshop improvements being insufficient to establish inventiveness.

4.60 Evidence at trial was provided by expert witnesses as to what constituted a workshop variation in the particular technology, and in particular to the use of a tilting mechanism to reduce the risk of shearing of the solder balls by the trailing wall of the container. This type of mechanism was disclosed in two prior art documents. Based on the expert evidence the Court considered that it would be obvious to use the features disclosed in these documents to modify the known prior art devices to arrive at the claimed invention.

4.61 Generally, a workshop improvement will involve trivial modification of an existing product which the person skilled in the art would be expected to implement without practical difficulty and without the expectation of a significant technical or commercial improvement. Notably, the considerations under “workshop variation” are similar to those under “lying in the road”, and it may be that objection could be formulated under either. Evidence from the applicant of a practical difficulty or a surprising advantage may be sufficient to circumvent such an objection.