Inventive Step

The modified “Windsurfing test”: the “Pozzoli” approach

4.22 The “Windsurfing approach” was elaborated upon by Jacob LJ in Pozzoli SPA v BDMO SA [2007] EWCA Civ 588. Singapore Courts have not formally adopted this modified test, but in any case the differences are essentially in form rather than substance. Jacob LJ provided the following reasoning:

“First one must actually conduct the first two operations in the opposite order – mantle first, then concept. For it is only through the eyes of the skilled man that one properly understand what such a man would understand the patentee to have meant and thereby set about identifying the concept.

Next, that first step actually involves two steps, identification of the attributes of the notional ‘person skilled in the art’ (the statutory term) and second identification of the common general knowledge (‘cgk’) of such a person.”

4.23 Thus, the modified test can be summarised as follows:

(1) (a) Identify the notional “person skilled in the art” (b) Identify the relevant common general knowledge of that person;

(2) Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;

(3) Identify what, if any, differences exist between the matter cited as forming part of the “state of the art” and the inventive concept of the claim or the claim as construed;

(4) Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?

4.24 While this modified test has not formally been adopted by the Singapore Courts, Examiners may use the “Pozzoli” approach when formulating an inventive step objection. Steps (1)(a) and (1)(b) are required in any case when construing a claim, so in essence the “Pozzoli” approach merely articulates an implicit step in the Windsurfing test.