Inventive concept or inventive step?
Published on 15th July 2015
In a recent decision over an on-board system for indicating the loading state a truck, VPG Systems UK v Air-Weigh Europe [2015], HHJ Hacon in the IPEC stepped briefly back from the technical details before him to ruminate on the nature and relevance of the inventive concept in a patent.
When considering patent validity, as one often does in the course of a patent dispute, the questions of novelty and inventive step are often the meat of the issue.
Novelty of the claimed invention is rarely easy to attack: patent examiners can generally do a pretty good job at reviewing existing publications and carrying out the necessary element-by-element comparison with the claimed invention. If the published prior art contains a disclosure comprising all of the elements of the invention, then there is a good chance it will already have been found, and the claims amended during prosecution to avoid the document.
Inventive step, on the other hand, is a more fluid and subjective concept and accordingly one on which it is perfectly possible to disagree even with a skilled and conscientious patent examiner. The statutory question is whether the difference between the identified prior art and the claimed invention is one which would be obvious to a skilled, but wholly unimaginative, person in the same technical field (the ‘art’). The answer therefore depends upon how this hypothetical person is characterised – his or her education and degree of motivation to solve the problem – and also upon the piece of prior art under consideration, since English law does not permit making a mosaic of two or three items of prior art and considering them as a whole, unless there is a very clear reason why the skilled person would do so (such as a direction in the text of one document to look at material contained in the other).
The English courts have never come up with any hard-and-fast test as such by which this question of obviousness can be assessed, but there has been guidance as to how best to approach it. In the current guidance from the Court of Appeal, in Pozzoli SpA v BDMO SA [2007], Jacob LJ added an initial step to the existing three step approach laid down 20 years earlier in Windsurfing International v Tabur Marine. Jacob LJ’s addition was to suggest that the court begin its assessment of the inventive step by identifying the “inventive concept” of the claim: disregarding the elements which, though included in the claim, were already known, what is the clever bit which the patentee is trying to capture? This exercise, in contrast to the assessment of inventive step, does not depend on what prior art has been cited against the patent, it is based purely on interpreting the patent document itself and precisely what has been claimed.
The inventive concept once identified will only be limited by additional elements added into the claims. But having identified it will also throw a spotlight on any claim which does not in fact embody that concept. However, useful though it may sometimes be, and promptly though the patent profession jumped to come into line with Jacob LJ’s formulation when the Pozzoli decision was first given, HHJ Hacon concludes that identifying the inventive concept is not a necessary component of the inventive step analysis. Ultimately, the court must compare the claimed invention against the prior art, and attempt to estimate the distance and difficulty of the step a skilled person would have to take in order to bridge it. Any degree of argument between the parties as to what the inventive concept should or should not be taken to comprise will only distract from that fundamental exercise, leaving the inventive concept a useful shortcut only where all parties essentially agree as to what it is. Since advocates invited to argue will almost always find something on which they can disagree, if this decision is followed, the Pozzoli approach may itself end up looking like something of a distraction from the past and future analyses followed by the courts.
