A patent is an intellectual property right relating to an invention. It lasts for 20 years and gives the patent holder (usually the inventor) the exclusive right to use exploit their invention during this time. An invention must satisfy four conditions in order to be capable of being granted a patent. It must:
– be new
– involve an inventive step
– be capable of use in an industrial setting
– not fall within an exclusion
This article will examine the second requirement; that an invention must involve an inventive step.
An invention is deemed to include an inventive step if it is not obvious to “a person skilled in the art”. Obviousness is considered on the basis of knowledge at the date the application was filed at the Intellectual Property Office. There is a large body of case law on the subject of what constitutes an obvious invention, with the courts interpreting this requirement in terms of technical rather than commercial obviousness.
A person “skilled in the art” has been held to be a person with the knowledge, skills and qualifications of a person who would ordinarily work in the relevant area, although one who lacks “the inventive spark”. Jacobs LJ went further in the case of Rockwater v Technip France SA (2004) by describing this fictional person as “very boring” and “a nerd”.
The court held in Williams v Nye (1890) that a patent did not satisfy the need for an inventive step by creating a machine which combined to pre-existing machines. In IDA v Southampton University (2006), an insect trap was deemed to have included an inventive step when a different material was used in its construction, despite its similarity to an existing design. In Pozzoli SpA v BDMO SA (2007), an invention did not include an inventive step and the patent application failed accordingly. The application related to a device for storing CDs and was deemed to be obvious.