Who must an invention be obvious to?

Schlumberger Holdings v Electromagnetic Geoservices [2010] EWCA Civ 819.

One of the recurring questions in patent infringement claims is whether an invention is non-inventive because it is obvious to “the person skilled in the art”. This is all well and good but what happens if the invention itself actually changes the art?

Without wishing to go into too much detail with the technical aspects of the case some basic information is important. Basically the case revolved around subsea exploration for oil and gas, such hydrocarbon pockets are found in porous sedimentary rock. The conventional method of looking for such rock is via a seismic survey, once the rock is found however it is still not known what it contains, this could be water or oil. At this point drilling is required. The industry worked like this for many years but at a cost of around $25m per exploration and only one in ten explorations bearing fruit it was crying out for new technology. The new invention is controlled source electromagnetic surveying (CSEM). Whilst it was already used it wasn’t used for oil and gas exlporation.

The issue here was the identity of the “person skilled in the art”:

“If a patentee says “marry the skills of two different arts to solve a problem”, marrying may be obvious or it may be not. If it is not, and doing so results in a real technical advance then the patentee deserves and ought to have a patent. His vision is out of the ordinary.”

It was considered that that is the situation in this case. It was decided that during the life of a patent “the person skilled in the art” could change, so for example when determining obviousness it may be one person (or specifically class of person) but when addressing post-patent issues this may have changed:

“…secondary evidence can and often does, play an important role. If a useful development was, in hindsight, seemingly obvious for years and the apparently straightforward technical step from the prior art simply was not taken, then there is likely to have been an invention…The plain fact is that there was no real explanation of why the idea was not taken up well before the date of the Patent. The simplest explanation – indeed the only one that fits the known facts – is that the inventors hit upon something which others had missed. Occam’s razor points to invention.”

Overall then this case has made it harder to invalidate a patent on obviousness.

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