IN this 41st instalment, we canvass the requirements of inventive step and industrial applicability for patentability of inventions.
Inventive step requirement
Variantly termed “obviousness” or “non-obviousness”, the notion of inventive step simply connotes that an invention is a step forward or has incremental creativity on the prior art. That is, it must not be obvious. Though, like the novelty requirement, inventive step is measured against prior art, the evaluation thereof is measured against a more restricted content of the state of the art. For instance, prior secret use on a commercial scale and pending patent applications that are open to public inspection are excluded from components of the state of the art against which the inventive step is tested.
Test of inventive step
The issue of inventive step does not arise in isolation, but cumulatively to the novelty requirement. That is to say, the issue of the inventive step of an invention only arises where novelty exists. In other words, the enquiry as to inventiveness (inventive step) assumes that there is some gap present between the prior art and the invention under consideration. In pursuit whereof the question considered is whether at the priority or filing date of the application, having regard to the state of the art known, it would have been obvious to the person skilled in the art to arrive at the same result.
In this enquiry, however, unlike that of novelty, it is quite permissible to combine disclosures from different sources of prior art so long as such combination would have been obvious to the skilled person in the art.
The term “obvious”
By the term obvious is meant creativity that does not go beyond the normal progress of the technology in question but merely follows logically from the nature of the prior art. Put differently, the resultant creation lacks in skill or ability beyond that which is expected from a normal skilled person in the art in question. In this determination, the claimed invention is considered as a whole by examining the technical features or essential integers of the claims.
In which case where the claimed invention embraces separate embodiments, one or more of which is obvious and the rest non-obvious, then the claim would be invalid until the offending embodiments have been execised by appropriate amendments.
Person skilled in the art
From the litany of the dicta of various jurisdictions across the globe the notion “person skilled in the art” connotes an “unimaginative skilled technician” as opposed to a leading expert in the field.
At the same time, this does not imply that the notional unimaginative technician is to be construed as a dull plodder, but rather as someone presumed to be an ordinary technician possessed of sufficient general knowledge in the art as at the filing date of the application.
Further, he/she should have at their disposal the normal means and capacity to conduct routine work and experimentation to reach such a result, regard, of course, being given to the sophistication and uniqueness of each particular art and circumstances.
Construction of claims
To the extent that inventive step is determined from the essential integers as contained in the claims (hence the scope of the derivative monopolistic rights), the claims are to be construed as per purpose. In which regard there is no particular measurable degree of inventiveness nor is there any particular measurable skill required. This entails a qualitative as opposed to quantitative assessment of inventiveness. In-as-much, it is an objective assessment based on the factual circumstances of each case as opposed to subjective notions.
Approach to inventive step
In sum, in determining whether or not the claimed invention involves an inventive step, the global jurisprudential approach holds that the examiner or the court should determine:
- The nature of the art to which the invention relates;lThe state of the art as at the priority date;
- Whether the invention is a step beyond the state o the art;
- The notional skilled person in the art;
- The common general knowledge of the skilled person, and
- Whether such skilled person possessed of this general knowledge would, against the backdrop of the state of the art, regard the invention as a step forward thus non-obvious.
As is the position with respect to the test for novelty, the subjective opinions of expert witnesses are admissible only to the extent of merely guiding the examiner or the in the court construction of the claims and not to usurp this function.
Industrial application requirement
Having ascertained the presence of novelty and inventive step, the next prerequisite requirement for patentability is to determine whether or not the invention is capable of being used or applied in trade, industry or agriculture to produce the desired result. In other words, the invention must be useful or it must work. To be useful, it is not necessarily that the invention must be a commercial success, though this can be of vital importance in buttressing the industrial applicability of the invention.
The usefulness of an invention can be construed from the purpose for which the patentee indicates within the four corners of the specification. In this exercise, the directions as to how the invention must work are interpreted from the eyes of a specialist in the art who would work with the invention.
The invention must be read with a mind willing to understand and not intent on misunderstanding the working of the invention. This raises the issue of sufficiency of disclosure of the invention.
Sufficiency of disclosure
The basic principle in patent protection is that the application must disclose the invention in a manner that is sufficiently clear and complete for it to be understood and carried out by a skilled person in the art. The rationale for sufficiency of disclosure lies in that patent monopoly is granted in exchange for an enabling disclosure being presented by the patentee so that the public at large may access, learn and be able to practice the invention at the expiration of the patent protection. As such, the patent system revolves on the fundamental principle that the patentee must teach the public about the invention in exchange for the limited monopoly granted to them.
As such, the notional skilled person exemplifies the relevant section of the public who would be able to understand the technical information contained in the patent application as to (i) the nature of the invention, (ii) the technical problem to which it relates, (iii) the found solution to the problem, and (iv) its industrial application.
However, it is not necessary for the patentee to define all the finer details of the invention which will achieve the desired result, so long as whatever is left out would be ascertainable by the skilled person through trial and error.
In this regard, the test applied is whether the skilled addressee would readily rectify the mistakes and furnish the omissions without the need to exercise any inventive faculty. If the answer to this enquiry is in the affirmative, then there is sufficiency of disclosure. If in the negative, then the invention is rendered void for want of sufficiency of disclosure.
- Pasipanodya is an IP consultant who writes in his own capacity. Feedback on: mobile +263 775053007, or e-mail:firstname.lastname@example.org.