Inventive step – is an objective approach only a dream?
The role of indicia in revocation proceedings
2 December 2011
Isabelle Romet,
Véron & Associés
Anders Valentin, Horton
Dr Myles Jelf, Bristows

• Introduction
• Primary tests for inventive step
• When do secondary indicia come into play?
• What factors promote / detract / influence an ‘objective’ assessment of inventive step?

• What do we mean by an ‘objective’ assessment?
• The theoretical ideal
• How do current national systems cope?

• Define relevant person skilled in the art
• Define scope of general knowledge
• PSA: Shall be used (DK Guide Lines since 1 June 2007)
• Very few decisions: Supreme Court confirmed PSA approach as per
EPO case law

• Pozzoli / Windsurfing
1a) Identify the notional ‘person skilled in the art
1b) Identify the relevant common general knowledge of that person
2) Identify the inventive concept of the claim in question (or if not possible, construe the claim)
3) Identify what, if any, differences exist between the prior art and the inventive concept/construed claim
4) Without hindsight, do those differences constitute steps obvious to the skilled man or do they require any degree of invention.

• Very little case law
• Recent case law follows on EPO case law

• Number of factors have been considered by courts (helpfully summarised by
Prof Sir Robin Jacob at Venice conference):
• How old is the prior art?
• How widely distributed?
• Why was the invention not arrived at before?
• Was there a long felt want?
• How many steps from the prior art is the invention?
• Were others struggling to solve the same problem?
• How was the invention received?
• Was the invention a great commercial success?

• Commercial success in itself raises a number of questions ( Haberman v
Jackal ):
• What problem did the invention address?
• How long had that problem existed?
• How significant was the problem seen to be?
• How widely known was the problem?
• What prior art was generally known?
• What other solutions were previously put forward?
• Did some external factor hold back solution?
• How has the invention been received?
• Is any commercial success due to the technical merit of the invention?

What factors promote / detract / influence an ‘objective’ assessment of inventive step?: UK
• Linguistic: ‘inventive/obvious’ vs ‘erfinderischen/naheliegender’ vs
‘inventive/évidente’ vs….
• Cultural
• Intra-discipline
• Intra-jurisdiction
• Systematic
• nature of proceedings
• Tribunal
• Balance of social policy?

What factors promote / detract / influence an ‘objective’ assessment of inventive step?: France

What factors promote / detract / influence an ‘objective’ assessment of inventive step?: Denmark
• Relative to “creative step” (utility models)?
• Inventive step (height) vs. creative step
• Maritime and Commercial Court decision regarding creative step

isabelle.romet@veron.com
www.veron.com
ava@horten.dk
www.horten.dk
myles.jelf@bristows.com
www.bristows.com