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Inventive Step

The starting point for the inventive step consideration

4.30 The applicant may set out the starting point for the inventive step consideration, often by stating the problem to be solved, or by setting out the prior art. However, Examiners are not bound by such statements by the applicant, and can approach the consideration from a different direction. In some cases, the same invention may be arrived at from an attempt to solve different problems, in some cases with a different level of inventive step.

4.31 Any document from the state of the art as set out in Section 14(2) may be used as the starting-point for an inventive step objection. The general principle was set out by Laddie J in Pfizer Ltd’s Patent [2001] FSR 16:

“A real worker in the field may never look at a piece of prior art for example he may never look at the contents of a particular public library or he may be put off because it is in a language he does not know. But the notional addressee is taken to have done so. This is a reflection of part of the policy underlying the law of obviousness. Anything which is obvious over what is available to the public cannot subsequently be the subject of valid patent protection even if, in practice, few would have bothered looking through the prior art or would have found the particular items relied on.”

4.32 As a consequence an inventive step objection will not be overcome by merely arguing that the person skilled in the art would have been unaware of the document, if that document has been made public anywhere in the world, in any language, at any time before the priority date. See also Wake Forest University Health Sciences & Ors v Smith & Nephew Plc & Anor [2009] EWCA Civ 848, where a document that was shown to be available in only four libraries in the former Soviet Union was nonetheless available for use in an inventive step argument.

4.33 Two additional considerations in selecting the starting point for the inventive step consideration are:

(1) whether the person skilled in the art could reasonably be expected to find the document when conducting a diligent search for material relevant to the problem in hand; and

(2) whether if he had found the document, he would have given it serious consideration. In some cases the age of the document may be relevant, as may be whether, if it is one of a large number of relevant documents, there was any reason why the person skilled in the art should have selected this particular document.

4.34 However, any piece of prior art must be viewed through the eyes of the person skilled in the art at the priority date. The prior art may teach towards the invention, but on the other hand, it may cause the person skilled in the art to disregard it. Examiners should ensure that they take all common general knowledge into consideration, including prior art that teaches away from the invention. For example, in Actavis v Merck, [2008] RPC 26, the invention involved the treatment of alopecia (baldness). A published document indicated that a particular drug was useful for the treatment of this ailment. However, the Court of Appeal found that at the priority date of the application, the common general knowledge in the field was that this drug was ineffective at any dosage. Accordingly, claims to the treatment at a particular dosage were found inventive.

4.35 In some cases, there may be a relatively short time lapse between the publication of a document and the priority date of the application under consideration. However, this is not a consideration – the question is whether the claimed invention is obvious over the prior art, not whether there would in fact be time to arrive at the invention by the priority date (Merck Sharp & Dohme Corp v Teva UK Ltd [2011] EWCA Civ 382).

4.36 On the other hand, a document may be relatively old, and submission made along the lines that if it was obvious why wasn’t it done sooner? This argument was addressed by Laddie J in Brugger and others v Medic-Aid Ltd [1996] RPC 635:

“The fact that a document is old does not, per se, mean that it cannot be a basis for an obviousness attack. On the contrary, if a development of established and ageing art is or would be obvious to the skilled worker employed by a hungry new employer, it cannot be the subject of valid patent protection even if those who have been in the trade for some time, through complacency or for other reasons, have not taken that step. Each pleaded piece of prior art must therefore be assessed as if it was being considered afresh at the priority date. It is not to be excluded from this exercise merely because it is old. There is no rule of commerce that every new product or process must be developed and put on the market or published in literature as soon as it becomes obvious.

It is only when the answer to the question ‘why was this not developed earlier’ is ‘a likely and reasonable explanation is that people looking for a way round an existing problem did not see this as the answer’ that the age of the prior art should play a part in meeting an obviousness attack. If it is likely that in the real world no one was looking for an answer the fact that none was found says nothing about whether the answer proposed in the patent under attack was obvious.” [emphasis added]

4.37 Another area in which old documents are particularly relevant in a consideration of inventive step is where technological advances make a previously impractical invention viable. For example, a particular invention may not be commercially viable because the cost of materials render it too expensive. However, the development of new materials or new processes for the preparation of materials may make such inventions commercially viable.