Patents

Obviousness (Inventive Step)

Jane Lambert

Last updated 29 Feb 2004

An invention is patentable only if it involves an inventive step. Art 56 of the EPC provides that an invention shall be considered as involving an inventive step if having regard to the state of the art it is not obvious to a person skilled in the art. For the purpose of this article, the content of a European patent application filed before but published after the filing of a subsequent European patent application does not form part of the state of the art.. 

The "Windsurfer Test"
In Windsurfing International Inc. v Tabur Marine Great Britain Ltd. [1985] RPC 59, 73, Oliver LJ proposed the following 4-point test to determine whether an invention involves an inventive step:

	the court identifies the inventive concept embodied in the patent in suit
	the court will assume the mantle of the normally skilled but unimaginative addressee in the art (the person to whom the patent is addressed) at the relevant date and impute to him what was at that date common general knowledge in the art in question
	the court identifies what, if any, differences exist between matter cited as known or used and the alleged invention, and
	the court decides whether, viewed without any knowledge of the invention, those differences constitute steps which would have been obvious to the skilled man or whether they required any degree of invention.

A similar approach is applied consistently by the Boards of Appeal of the European Patents Office (e.g. Yushiro Chemical Industry Co. Ltd.'s Application, T0876-96 Technical Board of Appeal, 13 March 2001, page 5).

Difference between Obviousness and Novelty

There are a large number of authorities on the differences between obviousness and novelty. In Advanced Building Systems Pty Ltd. v Ramset Fasteners (Aust) Pty Ltd [1998] HCA 19, the latest case in which a final appellate court of a common law country has considered the issue, the  High Court of Australia endorsed the dicta of Windeyer J in Sunbeam Corporation v Morphy-Richards (Aust) Pty Ltd. (1961) 180 CLR 98, 111 and of Aickin J in Wellcome Foundation Ltd v R Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 at 270. Windeyer J said:

"When want of novelty was asserted, the thing or process claimed as an invention was assumed to be an invention that is the product of the inventive faculties; but it was said that it was not now at the date of the patent, having been earlier invented and disclosed to the public. When want of subject matter, or lack of inventiveness, was asserted the thing or process claimed as an invention was assumed to be a new thing or process not previously disclosed to the public; but it was said that it was not really an invention and thus not a proper subject matter for the grant of a patent."

Aickin J said:

"the question of obviousness involves asking the question whether the invention would have been obvious to a non-inventive worker in the field, equipped with the common general knowledge in that particular field as at the priority date, without regard to documents in existence but not part of such common general knowledge".

Important