Inventive Step

The “Windsurfing test”

4.18 The test set out in Windsurfing International Inc. v Tabur Marine (Great Britain) Ltd [1985] RPC 59 has been adopted in a number of Singapore Court decisions, including: V-Pile Technology (Luxembourg) SA and Others v Peck Brothers Construction Pte Ltd [2000] 3 SLR 358; Merck & Co Inc v Pharmaforte Singapore Pte Ltd [2000] 3 SLR 717; Genelabs Diagnostics & Anor v Institut Pasteur & Anor [2001] 1 SLR 121; Ng Kok Cheng v Chua Say Tiong [2001] 3 SLR 487; Peng Lian Trading Co v Contour Optik Inc & Ors [2003] 2 SLR 560; Trek Technology (Singapore) Pte Ltd v FE Global Electronics Pte Ltd [2005] 3 SLR(R) 389; First Currency Choice Pte Ltd v Main-Line Corporate Holdings Ltd and Another Appeal [2007] SGCA 50; and Martek Biosciences Corporation v Cargill International Trading Pte Ltd [2012] SGHC 35.

4.19 The UK Court of Appeal in Windsurfing held that the question of obviousness

“has to be answered, not by looking with the benefit of hindsight at what is known now and what was known at the priority date and asking whether the former flows naturally and obviously from the latter, but by hypothesizing what would have been obvious at the priority date to a person skilled in the art to which the patent in suit relates.”

4.20 In order to reduce the risk of hindsight, the Court formulated a four step approach to assessing obviousness:

(1) Identify the claimed inventive concept.

(2) Assume the mantle of the normally skilled but unimaginative addressee in the art at the priority date and to impute to him what was, at that date, common general knowledge of the art in question.

(3) Identify what, if any, differences exist between the matter cited as being “known or used” and the alleged invention.

(4) Decide, without any knowledge of the alleged invention, whether these differences constitute steps which would have been obvious to the person skilled in the art or whether they require any degree of invention.

4.21 When using this framework, Examiners should note that the third step refers to matter cited as being “known or used”. This was the language of the previous UK Patents Act. Examiners should ensure that they have regard to the “state of the art” and use such a term in the objection.