The inventive step and the ‘law of collocation’

Section 3 of the Patents Act 1977 states that, to be patentable, an invention must involve an inventive step. This principle is settled law in all countries in their respective national laws and the European Patent Office (‘EPO’).

Inventive step requires the invention not to be obvious to a person skilled in the art, wherby it is comprised all matter (product, process, information about either or anything else) which has at any time before the priority date of the invention been made available to the public.

This principle is not clear in the case of collocation, i.e. where the combination of new elements in a particular way that has never been tried before can lead to fulfilling the principle of inventive step.

In cases like Windsurfing International Inc v Tabur Marine (Great Britain) Ltd, in determining whether the inventive step exists or not, the judge stated that we must consider the fact that if the ‘putting together’ of the new elements could have been obvious to the skilled man or whether it requires any degree of invention.

Lately, the EPO Guidelines for Substantive Examination (2003) and recent cases like Sabaf SpA v MFI Furniture Centres Limited and others and Conjoined Appeals (2004) have turned this rule down, applying a new and more unfavourable criteria to identify the inventive step: the ‘law of collocation’, according to it the patent claim must be dismissed where the invention consists merely in the juxtaposition or association (even non-obvious) of known devices or processes functioning in their normal way and not producing any non-obvious working inter-relationship.

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