Inventive step – is an objective approach only a dream? The role of indicia in revocation proceedings 2 December 2011 Isabelle Romet, Véron & Associés Anders Valentin, Horton Dr Myles Jelf, Bristows

Agenda Introduction Primary tests for inventive step When do secondary indicia come into play? What factors promote / detract / influence an ‘objective’ assessment of inventive step?

Introduction What do we mean by an ‘objective’ assessment? The theoretical ideal How do current national systems cope?

Primary test for inventive step: France

Primary Test for Inventive Step: Denmark Define relevant person skilled in the art Define scope of general knowledge PSA: Shall be used (DK Guide Lines since 1 June 2007) Very few decisions: Supreme Court confirmed PSA approach as per EPO case law

Primary Test for Inventive Step: UK Pozzoli / Windsurfing 1a) Identify the notional ‘person skilled in the art 1b) Identify the relevant common general knowledge of that person 2) Identify the inventive concept of the claim in question (or if not possible, construe the claim) 3) Identify what, if any, differences exist between the prior art and the inventive concept/construed claim 4) Without hindsight, do those differences constitute steps obvious to the skilled man or do they require any degree of invention.

Secondary Considerations: Denmark Very little case law Recent case law follows on EPO case law

Secondary Considerations: UK Number of factors have been considered by courts (helpfully summarised by Prof Sir Robin Jacob at Venice conference): How old is the prior art? How widely distributed? Why was the invention not arrived at before? Was there a long felt want? How many steps from the prior art is the invention? Were others struggling to solve the same problem? How was the invention received? Was the invention a great commercial success?

Secondary Considerations: UK (2) Commercial success in itself raises a number of questions (Haberman v Jackal): What problem did the invention address? How long had that problem existed? How significant was the problem seen to be? How widely known was the problem? What prior art was generally known? What other solutions were previously put forward? Did some external factor hold back solution? How has the invention been received? Is any commercial success due to the technical merit of the invention?

Secondary Considerations: France

What factors promote / detract / influence an ‘objective’ assessment of inventive step?: UK Linguistic: ‘inventive/obvious’ vs ‘erfinderischen/naheliegender’ vs ‘inventive/évidente’ vs…. Cultural Intra-discipline Intra-jurisdiction Systematic nature of proceedings Tribunal Balance of social policy?

What factors promote / detract / influence an ‘objective’ assessment of inventive step?: France

What factors promote / detract / influence an ‘objective’ assessment of inventive step?: Denmark Relative to “creative step” (utility models)? Inventive step (height) vs. creative step Maritime and Commercial Court decision regarding creative step

Questions and Discussion

Thank you for your attention