Inventive Step

The inventive concept

4.25 The inventive concept is determined by the technical facts of the case in question. In Generics (UK) Limited v H Lundbeck A/S [2009] UKHL 12, Lord Walker stated that:

“‘Inventive concept’ is concerned with the identification of the core (or kernel, or essence) of the invention—the idea or principle, of more or less general application (see Kirin-Amgen, [2005] RPC 169 paras 112-113) which entitles the inventor’s achievement to be called inventive. The invention’s technical contribution to the art is concerned with the evaluation of its inventive concept— how far forward has it carried the state of the art? The inventive concept and the technical contribution may command equal respect but that will not always be the case.”

4.26 Lord Neuberger agreed with Lord Walker stating:

“‘Inventive step’ suggests how something has been done, and, in the case of a product claim at any rate, one is primarily concerned with what has been allegedly invented, not how it has been done. On the other hand where the claim is for a process or (as in Biogen, [1997] RPC 1) includes a process, the issue of how the alleged invention has been achieved seems to be more in point.”

4.27 Jacob J observed in Unilever PLC v Chefaro Proprietaries Ltd [1994] RPC 567 at page 580 (cited with favour in ASM Assembly Automation Ltd v Aurigon Technology Pte Ltd and Others [2009] SGHC 206):

“It is the inventive concept of the claim in question which must be considered, not some generalised concept to be derived from the specification as a whole. Different claims can, and generally will, have different inventive concepts. The first stage of identification of the concept is likely to be a question of construction: what does the claim mean? It might be thought there is no second stage — the concept is what the claim covers and that is that. But that is too wooden and not what courts, applying Windsurfing stage one, have done. It is too wooden because if one merely construes the claim one does not distinguish between portions which matter and portions which, although limitations on the ambit of the claim, do not. One is trying to identify the essence of the claim in this exercise.”

4.28 Finding the essence of a claim will involve constructing something akin to a précis of the claim – essentially stripping out unnecessary verbiage from the purposively construed claim. In Raychem Corp.’s Patents [1998] RPC 31 it was noted that a properly drafted claim will state the inventive concept concisely. However, where claims are prolix and opaque the Court should break free of the language and concern itself with what they really meant. In particular, Laddie J noted:

“One of the arguments advanced … was that Raychem’s patents were an exercise in what has become known amongst patent lawyers as parametritis. This is the practice of seeking to repatent the prior art by limiting claims by reference to a series of parameters which were not mentioned in the prior art. Sometimes it includes reference to parameters measured on test equipment which did not exist at the time of the prior art. The attraction of this to a patentee is that it may be impossible to prove now that the prior art inevitably exhibited the parameters and therefore it is impossible for an opponent to prove anticipation …

There is another practice which can be used to obscure the patentee’s contribution, if any, to the art. This takes the form of drafting claims in an unnecessarily complicated way so that they are difficult to work through … Unnecessary obscurity is not a separate ground for invalidating a claim. Within wide limits a patentee can use what language he likes to define his invention. But the court has to guard against being impressed by the form and language of the claims rather than the substance of the patentee’s alleged technical contribution.

In all cases, and no matter what the nature of the attack on validity or arguments on infringement, the court must have in mind the first of the four steps set out in Windsurfing International Inc. v. Tabur Marine (Great Britain), [1985] RPC 59. It must identify the inventive concept embodied in the claims. In many cases the claim will state that concisely. That is what a properly drafted claim should do. The first step in Windsurfing does not require the court to substitute its own language for that of the patentee if the latter is clear. But where, as here, the claims are prolix and opaque it should break free of the language and concern itself with what the claims really mean.”

4.29 Furthermore, while the inventive concept can be broader than the claim (because immaterial features of the claim may be ignored), it cannot be narrower than the claim. In Datacard Corp. v Eagle Technologies Ltd [2011] RPC 17, Arnold J held that the inventive concept cannot be defined in terms which apply only to a narrow sub-group of embodiments with certain technical advantages, and which do not apply to the rest of the claim. If the patentee has chosen to claim the invention broadly, the inventive concept must be of at least equivalent breadth.