The inventive step and non-obviousness reflect a same general patentability Within the context of a national or multilateral body of law, an invention is patentable if it meets the relevant legal conditions to be granted a patent. By extension, patentability also refers to the substantive conditions that must be met for a patent to be held valid requirement present in most patent A patent is a set of exclusive rights granted by a state (national government) to an inventor or their assignee for a limited period of time in exchange for a public disclosure of an invention laws Law is a system of rules, usually enforced through a set of institutions. Laws can shape or reflect politics, economics and society in numerous ways and serves as a primary social mediator of relations between people. Contract law regulates everything from buying a bus ticket to trading on derivatives markets. Property law defines rights and, according to which an invention An invention is a new composition, device, or process. An invention may be derived from a pre-existing model or idea, or it could be independently conceived in which case it may be a radical breakthrough. In addition, there is cultural invention, which is an innovative set of useful social behaviors adopted by people and passed on to others should be sufficiently inventive — i.e., non-obvious — in order to be patented.

The expression "inventive step" is predominantly used for instance in Germany A region named Germania, inhabited by several Germanic peoples, has been known and documented before AD 100. Beginning in the 10th century, German territories formed a central part of the Holy Roman Empire, which lasted until 1806. During the 16th century, northern Germany became the centre of the Protestant Reformation. As a modern nation-state,, in the United Kingdom The United Kingdom of Great Britain and Northern Ireland[note 7] is a sovereign state located off the northwestern coast of continental Europe. It is an island country, spanning an archipelago including Great Britain, the northeastern part of the island of Ireland, and many small islands. Northern Ireland is the only part of the UK with a land and under the European Patent Convention The Convention on the Grant of European Patents of 5 October 1973, commonly known as the European Patent Convention , is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to which European patents are granted. The term European patent is used to refer to patents granted under the (EPC), while the expression "non-obviousness" is predominantly used in United States patent law United States patent law was established "to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;" as provided in the United States Constitution. Congress implemented these protections as a first-to-invent patent legal. Although the basic principle is roughly the same, the assessment of the inventive step and non-obviousness varies from one country to another. For instance, the practice of the European Patent Office (EPO) differs from the practice in the United Kingdom.

Contents

European Patent Convention

Main article: Inventive step under the European Patent Convention

Pursuant to the Article 52(1) in conjunction with Article 56, first sentence, EPC, European patents shall be granted for inventions An invention is a new composition, device, or process. An invention may be derived from a pre-existing model or idea, or it could be independently conceived in which case it may be a radical breakthrough. In addition, there is cultural invention, which is an innovative set of useful social behaviors adopted by people and passed on to others which, among other things, involve an inventive step, that is, the invention, having regard to the state of the art The state of the art is the highest level of development, as of a device, technique, or scientific field, achieved at a particular time. It also applies to the level of development reached at any particular time usually as a result of modern methods, must not be obvious to a person skilled in the art The person having ordinary skill in the art , the person of ordinary skill in the art, the person skilled in the art or simply the skilled person is a legal fiction found in many patent laws throughout the world. This fictional person is considered to have the normal skills and knowledge in a particular technical field, without being a genius. He.

Problem-solution approach

The Examining Divisions The grant procedure before the European Patent Office is an ex parte, administrative procedure, which includes the filing of a European patent applications, the examination of formalities, the establishment of a search report, the publication of the application, its substantive examination, and the grant of a patent, or the refusal of the, the Opposition Divisions, and the Boards of Appeal of the EPO Decisions of the first instances of the European Patent Office can be appealed, i.e. challenged, before the Boards of Appeal of the EPO, in a judicial procedure (proper to an administrative court), as opposed to an administrative procedure. These boards act as the final instances in the granting and opposition procedures before the EPO. Since almost always apply the "problem-solution approach" in order to decide whether an invention involves an inventive step. The approach consists in:

  1. identifying the closest prior art, the most relevant prior art;
  2. determining the objective technical problem, that is, determining, in the view of the closest prior art, the technical problem which the claimed Patent claims are usually in the form of a series of specified elements and corresponding limitations, or more precisely noun phrases, following the description portion of the invention in a patent or patent application. The claims define, in technical terms, the extent of the protection conferred by a patent, or the protection sought in a patent invention addresses and successfully solves; and
  3. examining whether or not the claimed solution to the objective technical problem is obvious for the skilled person in view of the state of the art in general.

This last step is conducted according to the "could-would approach". Pursuant to this approach, the question to address in order to assess whether the invention involves an inventive step is the following (the question is the climax of the problem-solution approach):

Is there any teaching in the prior art Prior art , in most systems of patent law, constitutes all information that has been made available to the public in any form before a given date that might be relevant to a patent's claims of originality. If an invention has been described in prior art, a patent on that invention is not valid, as a whole, that would, not simply could, have prompted the skilled person, faced with the objective technical problem formulated when considering the technical features not disclosed by the closest prior art, to modify or adapt said closest prior art while taking account of that teaching [the teaching of the prior art, not just the teaching of the closest prior art], thereby arriving at something falling within the terms of the claims, and thus achieving what the invention achieves?

If the skilled person would have been prompted to modify the closest prior art in such a way as to arrive at something falling within the terms of the claims, then the invention does not involve an inventive step.

The point is not whether the skilled person could have arrived at the invention by adapting or modifying the closest prior art, but whether he would have done so because the prior art incited him to do so in the hope of solving the objective technical problem or in expectation of some improvement or advantage. This must have been the case for the skilled person before the filing or priority In patent, industrial design rights and trademark laws, a priority right or right of priority is a time-limited right, triggered by the first filing of an application for a patent, an industrial design or a trademark respectively. The priority right belongs to the applicant or his successor in title and allows him to file a subsequent application date valid for the claim under examination.

For a discussion of the inventive step test for "software patents" and "computer-implemented inventions" under the EPO case law, see also "Inventive step test" section in Software patents under the EPC.

United Kingdom

A set of rules regarding the approach taken by the United Kingdom courts was laid out by the Court of Appeal in Windsurfing International Inc. v Tabur Marine (GB) Ltd. [1985] RPC 59, in determining the requirements for inventive step:

  1. Identifying the inventive concept embodied in the patent;
  2. Imputing to a normally skilled but unimaginative addressee what was common general knowledge in the art at the priority date;
  3. Identifying the differences if any between the matter cited and the alleged invention; and
  4. Deciding whether those differences, viewed without any knowledge of the alleged invention, constituted steps which would have been obvious to the skilled man or whether they required any degree of invention.

This test has been slightly reworked in the more recent Court of Appeal case Pozzoli Spa v BDMO SA & Anor [2007] EWCA Civ 588 (22 June 2007) [1]

  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?

United States

"Non-obviousness" is the term used in US ^ b. English is the de facto language of American government and the sole language spoken at home by 80% of Americans age five and older. Spanish is the second most commonly spoken language patent law to describe one of the requirements that an invention must meet to qualify for patentability, codified in 35 U.S.C. §103 Title 35 of the United States Code is a title of United States Code regarding patent law. One of the main requirements of patentability is that the invention being patented is not obvious, meaning that a "person having ordinary skill in the art" would not know how to solve the problem at which the invention is directed by using exactly the same mechanism. The Graham Factors, shown below, are used by courts to determine if the claimed invention is nonobvious.

Teaching-suggestion-motivation (TSM) test

Further, the combination of previously known elements can be considered obvious. As stated by Winner Int'l Royalty Corp. v. Wang, 202 F.3d. 1340, 1348 Case citation is the system used in many countries to identify the decisions in past court cases, either in special series of books called reporters or law reports, or in a 'neutral' form which will identify a decision wherever it was reported. Although case citations are formatted differently in different jurisdictions, they generally contain the (Fed. Cir., 2000), there must be a suggestion or teaching in the prior art to combine elements shown in the prior art in order to find a patent obvious. Thus, in general the critical inquiry is whether there is something in the prior art to suggest the desirability, and thus the obvious nature, of the combination of previously known elements.

This requirement is generally referred to as the "teaching-suggestion-motivation" (TSM) test and serves to prevent against hindsight bias (In re Kahn, Fed. Cir. 2006). As almost all inventions are some combination of known elements, the TSM test requires a patent examiner (or accused infringer) to show that some suggestion or motivation exists to combine known elements to form a claimed invention. Some critics of the TSM test have claimed that the test requires evidence of an explicit teaching or suggestion to make a particular modification to the prior art, but the Federal circuit has made clear that the motivation may be implicit, and may be provided for example by an advantage resulting from the modification. In other words, an explicit prior art teaching or suggestion to make a particular modification is sufficient, but not required for a finding of obviousness. The TSM test has been the subject of much criticism. The U.S. Supreme Court Clerks · Reporter of Decisions addressed the issue in KSR v. Teleflex (2006). The unanimous decision, rendered on April 30, 2007, overturned a decision of the Federal Circuit and held that it "analyzed the issue in a narrow, rigid manner inconsistent with §103 and our precedents," referring to the Federal Circuit's application of the TSM test.[2] The court held that, while the ideas behind the TSM test and the Graham analysis were not necessarily inconsistent, the true test of nonobviousness is the Graham analysis. However, according to Chief Judge Michel, the TSM test remains a part of the Federal Circuit's analysis, though it is applied mindful of the decision in KSR.[3]

Graham factors

The factors a court will look at when determining obviousness and non-obviousness in the United States were outlined by the Supreme Court Clerks · Reporter of Decisions in Graham et al. v. John Deere Co. of Kansas City et al., 383 U.S. 1 (1966) and are commonly referred to as the "Graham factors". The court held that obviousness should be determined by looking at

  1. the scope and content of the prior art;
  2. the level of ordinary skill in the art;
  3. the differences between the claimed invention and the prior art; and
  4. objective evidence of nonobviousness.

In addition, the court outlined examples of factors that show "objective evidence of nonobviousness". They are:

  1. commercial success;
  2. long-felt but unsolved needs; and
  3. failure of others.

Other courts have considered additional factors as well. See Environmental Designs, Ltd. v. Union Oil Co. of Cal., 713 F.2d 693, 697-98, 218 USPQ 865, 869 (Fed. Cir. 1983) (considering skepticism or disbelief before the invention as an indicator of nonobviousness); Allen Archery, Inc. v. Browning Mfg. Co., 819 F.2d 1087, 1092, 2 USPQ2d 1490, 1493 (Fed. Cir. 1987) (considering copying, praise, unexpected results, and industry acceptance as indicators of nonobviousness); Diversitech Corp. v. Century Steps, Inc., 850 F.2d 675, 679, 7 USPQ2d 1315, 1319 (Fed. Cir. 1988) (considering copying as an indicator of nonobviousness).

Historical development

The grant of a U.S. patent has always required more than simple novelty as illustrated by Thomas Jefferson's 1813 letter[4] explaining that changing material to "chain, rope, or leather" was insufficient for patentability. However, the Supreme Court's pronouncement in Hotchkiss v. Greenwood is generally regarded as the Court's first attempt to explain the theory.

The Court's decision in Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp. is often considered the high-water mark of the application of obviousness doctrine as the Court reversed the patent grant of a commercially successful mechanical device as merely a "gadget." After Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., the U.S. Congress passed the Patent Act of 1952, in part, to reduce the impact of nonobviousness on patentability and to eliminate the flash of genius test.

The Supreme Court would later interpret the Patent Act of 1952 in Graham v. John Deere Co., United States v. Adams, and Calmar v. Cook Chemical.[5]

Further reading

See also

References

  1. ^ Pozzoli Spa v BDMO SA & Anor (2007) EWCA Civ 588 (22 June 2007)
  2. ^ Syllabus and Opinion of the Court in KSR v. Teleflex (2006)
  3. ^ More on the impact of KSR, Lawrence Ebert, 2007-05-01
  4. ^ The Letters of Thomas Jefferson: 1743-1826
  5. ^ Calmar v. Cook Chemical

External links

Categories: Patent law

 

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