A new test for inventive step has been laid out by Jacob LJ in Pozzoli vs BDMO. The old “Windsurfing” test (Set out by Oliver LJ in Windsurfing v. Tarbur Marine  FSR 59) has been redefined and re-ordered. The steps of the new test are as follows:
(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 readily be 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?
It appears one of the purposes of the change was to bring the old test “up to date”, specifically as under the 1949 Act (when the original Windsurfing test was developed), the statutory words for the prior art were “known or used”. The European Patent Convention uses the words “state of the art”.
Jacob then re-ordered the first two steps as “it is only through the eyes of the skilled man that one properly understand what such a man would understand the patentee to have meant and thereby set about identifying the concept”.
Next, Jacob re-defined the first step as actually involving two steps: identification of the attributes of the notional “person skilled in the art” (the statutory term) and second, the identification of the common general knowledge of such a person. Note, it is presumed, but not made explicit, that this step must be done as being performed at the priority date of the invention. It will be interesting to see if this step is expanded upon further in the future in this regard.
Jacob has amended step 2 in order to explicitly state that “it is the inventive concept of the claim in question which must be considered, not some generalized concept to be derived from the specification as a whole. Different claims can, and generally will, have different inventive concepts”. Further, the inventive concept should also be assessed without taking into account the prior art.
It appears the third and fourth steps are performed as before, but note that step 3 also repeats the requirement that it is the inventive concept of the claim in question which is of importance.
The information provided in this article is, of course, of a general nature and should not be considered as legal advice; if you have any specific questions, please contact Jon Broughton at HLBBshaw in Epping, Essex, UK. E-mail: firstname.lastname@example.org. Visit the website at www.hlbbshaw.com.
The information contained in this alert is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.
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