Inventive Step and Non-obviousness: Global Perspectives

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1 Primer Encuentro Internacional AMPPI First International AMPPI Conference Inventive Step and Non-obviousness: Global Perspectives Marc V. Richards March 23, 2012

2 Isn t it Obvious? 2

3 The Wide World of Inventive Step/Obviousness Lack of Global Standard AIPPI s Past Work Inventive Step/Non-Obviousness: Different Countries Different Definitions Different Approaches AIPPI s Resolution for Global Harmonization Conclusion 3

4 Lack of Global Standard Exact definition varies from country to country Different Results of Patentability in Each Country Europe, Mexico and many other countries consider Inventive Step U.S. considers Non-Obviousness Practically Synonymous But results on patentability are not the same 4

5 AIPPI s Study on Inventive Step Q35 London 1960 Unification of Patent Laws Q209 Buenos Aires 2009 Selection Inventions Q213 Paris 2010 Person Skilled in the Art Q217 Hyderabad 2011 Inventive Step / Non-Obviousness 5

6 Global Tour Mexico Europe (EPO) United States United Kingdom Canada Japan Brazil Other Countries 6

7 Mexico AIPPI Q217 Report There is no standard defined for evaluation of inventive step in Mexico. Under Article 12 Fraction III, Inventive Step is defined as the creative process which results may not be deducted evidently from the prior art by a technician in that subject matter. From this is deduced the problem-solution approach. Generally the Mexican Institute for Industrial Property (IMPI) follows the criteria of the European Patent Office 7

8 European Patent Office EPC Article 52 Patentable Inventions: (1) European patents shall be granted for any inventions which are susceptible of industrial application, which are new and which involve an inventive step. EPC Article 56 - Inventive Step: 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. 8

9 EPO (cont d.) EPO predominantly applies the "problem-solution approach" in order to determine inventive step. identifying the closest prior art, i.e., the most relevant prior art; determining the objective technical problem, i.e., determining, in the view of the closest prior art, the technical problem which the claimed invention addresses and successfully solves; and 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. 9

10 United States Current Law 35 USC 103(a): A patent may not be obtained...., if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. This standard codified in 1952, but emanates from 100+ years of jurisprudence. 10

11 United States - Historical Review Obviousness originated in 1851, in Hotchkiss v. Greenwood, 52 U.S. (11 How.) 248 (1851). Improved method for making door knobs of clay instead of wood (prior art). Patent found void because it lacked the skill and ingenuity that is essential to a patentable invention. Heightened Standard in 1941, Cuno Engineering Corp. v. Automatic Devices, 314 U.S. 84 (1941) Patent for electric cigar lighter for use in automobile New and useful, but lacked the flash of creative genius. 11

12 United States - Post-WWII In 1950, Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147 (1950) Improved grocery checkout stand. Patent invalid for lacking inventive genius. Inventions only patentable if recognized by masters of the scientific field. In 1952, U.S. Congress adopted 35 USC 103 to define obviousness and eliminate the flash of genius or inventive genius test. It is immaterial whether [the invention] resulted from long toil and experimentation or from a flash of genius. 12

13 United States Current Approach In 1966, U.S. Supreme Court provided standard for obviousness that holds still today: Graham v. John Deere Co., 383 U.S. 1 (1966). Patent directed to a spring-release farming plow. The scope and content of the prior art are to be determined; Differences between prior art and the claims at issue are to be ascertained; and The level of ordinary skill in the pertinent art resolved. Against this backdrop, the obviousness or nonobviousness is determined. Secondary considerations: commercial success, long felt but unsolved needs, failure of others, etc. 13

14 United States - KSR In 2007, Graham v. Deere reaffirmed by U.S. Supreme Court in KSR Int l Co. v. Teleflex, Inc., 550 U.S. 398 (2007) Patent for adjustable gas pedal with an electronic throttle sensor Holding: CAFC s Teaching, Suggestion, Motivation (TSM) test is overly rigid and inconsistent with the expansive and flexible approach adopted by Court in Graham v. Deere Any need or problem known in the field of endeavor at the time of the invention and addressed by the patent can provide a reasoning for combining the elements in the manner claimed. 14

15 United States KSR (cont d.) The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. Not patentable if obvious to try with finite number of predictable solutions. Reasons to combine known elements found in: Interrelated teachings of multiple patents; Effects of demands known to the relevant design community or in the marketplace; Background knowledge possessed by an ordinary skilled artisan. (Common Sense) 15

16 Examples from U.S.P.T.O. Materials Ex Crocs, Inc. v. U.S. International Trade Commission, 598 F.3d 1294 (Fed. Cir. 2010). Teaching point: A claimed combination of prior art elements may be nonobvious where the prior art teaches away from the claimed combination and the combination yields more than predictable results. Ex Wyers v. Master Lock Co., 616 F.3d 1231 (2010). Teaching point: The scope of analogous art is to be construed broadly and includes references that are reasonably pertinent to the problem that the inventor was trying to solve. Common sense may be used to support a legal conclusion of obviousness so long as it is explained with sufficient reasoning. 16

17 Examples from U.S.P.T.O. Materials Example Rolls-Royce, PLC v. United Technologies Corp., 603 F.3d 1325 (Fed. Cir. 2010). Teaching point: An obvious-to-try rationale may be proper when the possible options for solving a problem were known and finite. However, if the possible options were not either known or finite, then an obvious-to-try rationale cannot be used to support a conclusion of obviousness. Ex Hearing Components, Inc. v. Shure Inc., 600 F.3d 1357 (Fed. Cir. 2010). Teaching point: Evidence that has been properly presented in a timely manner must be considered on the record. Evidence of commercial success is pertinent where a nexus between the success of the product and the claimed invention has been demonstrated. 17

18 United Kingdom Section 3 of the Patent Act adopted EPC standard An invention shall be taken to involve an inventive step if it is not obvious to a person skilled in the art, having regard to any matter which forms patent of the state of the art. In 1985, framework established in Windsurfing Intl v. Tabur Marine (GB) Ltd., [1985] RPC 59. In 2007, the framework was restated in Pozzoli SPA v. BDMO SA, [2007] EWCA Civ

19 U.K. Approach in Manual of Patent Practice 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 be readily 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? 19

20 Canada Section 28.3 of the Patent Act The subject-matter defined by a claim in an application for a patent in Canada must be subjectmatter that would not have been obvious on the claim date to a person skilled in the art or science to which it pertains, having regard to [the prior art]. Recently, in Apotex Inc. v. Sanofi-Synthelabo Canada Inc., [2008] 3 S.C.R. 265, the Supreme Court of Canada affirmed the approach laid out in Windsurfing Int l as restated in Pozzoli from the U.K. 20

21 Japan Article 29(2) of the Patent Act Where,..., a person ordinarily skilled in the art of the invention would have been able to easily make the invention based on an invention prescribed in any of the items [of prior art] a patent shall not be granted for such an invention. JPO Examination guidelines: Compare invention and closest prior art Examine sameness and differences Judge if differences can be easily overcome based on other evidence 21

22 Brazil As defined by Brazilian IP laws, An invention shall be considered as involving inventive activity whenever, for a person skilled in the art, it does not derive in evident or obvious manner from the state of the art. Application does not follow a formalized approach. Numerous factors may be taken into consideration, such as surprising results, superior performance, long felt unsolved needs, mere substitution of known elements, etc. 22

23 Other Countries China the invention has prominent substantive features and represents notable progress Sweden The invention must differ significantly from the prior art Finland and Norway The invention must differ essentially from the prior art 23

24 Other Countries Korea Assess whether it is difficult for a person skilled in the art to arrive at the invention. New Zealand When assessing inventive step, there is only a need for a scintilla of invention [ chispa de la invención ] 24

25 Inventive Activity versus Examination Inventor Patent Examiner Known Activities Subjective Problem-Need Closest Prior art Derived Objective Problem-Need Claimed Invention Inventive Solution Claimed Invention Known Solutions Factors Is it Obvious? Prior Art 25

26 AIPPI Q217 Resolution for Global Standard Definition: A claimed invention shall be considered to involve an inventive step ( be nonobvious ), if, having regard to the differences between the claimed invention and the prior art, the claimed invention as a whole would not have been obvious to a person skilled in the art at the filing date or, where priority is claimed, the priority date, of the application claiming the invention. 26

27 AIPPI Q217 Resolution for Global Approach Framework for Assessment: Identify the relevant prior art bearing in mind the nature of the invention; Identify the difference(s) that distinguish the claimed invention from the relevant prior art; Consider whether or not it would have been obvious for a person skilled in the art to have modified the relevant prior art to obtain the invention as a whole based on factors such as, but not limited to, common general knowledge, disclosures in the prior art, the technical problem to be solved and/or technical effects. 27

28 Conclusion No global definition of inventive step or non-obviousness. Most all countries agree that a patent is not granted if an invention is obvious. Majority of countries adopt a problem-solution approach to assessing inventive step. EPO, Germany, Mexico, etc. Minority of countries take generalized approach. U.S., Canada, U.K., etc. Other countries have no official formalized approach. Japan, Brazil. Now is time to develop global definition and approach to give strength to PPH and other initiatives. 28

29 Questions? Marc V. Richards fax BRINKS HOFER GILSON & LIONE Gracias Thank You Danke ありがとう Obrigado 谢谢 Kiitos Taak Tack 29