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Inventive Step At The UKIPO

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16 June, 2021

In order for a patent to be granted, the UK Patents Act requires that the invention involves an inventive step. In essence, this means that the invention must not be obvious to an idealised expert working in the technological field of the invention, known within patent law as “the person skilled in the art”. Although this requirement for an invention to involve an inventive step is ubiquitous throughout intellectual property law systems globally, the exact way in which the requirement is implemented and tested for generally varies from one jurisdiction to another. Consequently, some consideration should be given to the particular approach to inventive step taken by the governing body for administering IP rights in the UK – the UK Intellectual Property Office (UKIPO).

The current approach taken by the UKIPO and UK courts is to apply the Pozzoli test, which is a reformulation of the previous so-called Windsurfing approach, and which takes its name from the case of Pozzoli v BDMO in which it was first described. The Pozzoli test, applied to the individual claims of a patent or patent application, comprises the following steps:

(1)(a)    Identify the notional “person skilled in the art” – i.e. consider who would be the idealised expert in the technological field of the invention;

(1)(b)    Identify the relevant common general knowledge of that person – i.e. consider what knowledge and skills that person would have to make them competent in the technological field of the invention;

(2)        Identify the inventive concept of the claim in question – i.e. identify the “core” or “essence” of the invention as claimed;

(3)        Identify what, if any, differences exist between the cited “prior art” and the identified inventive concept – i.e. set out the differences between the invention as claimed and the alleged current state of technology in the field of the invention (typically established based on the results of a search for prior art carried out by the UKIPO);

(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? – this is the key step: bearing in mind the answers to steps (1) – (3) above, decide whether the person skilled in the art would find it obvious to make the necessary steps or modifications to the prior art that would lead them to the features of the claimed invention.

In practice, should the question of inventive step arise during the process of obtaining a patent, an examiner at the UKIPO will first form an initial opinion as to the identity and common general knowledge of the skilled person. The examiner can then import the relevant prior art onto the skilled person they have identified, and develop an inventive step objection according to the Pozzoli test. If the patent application is to be considered allowable, the UKIPO and the applicant must subsequently reach an agreement on an inventive set of features for the invention. This is often achieved by carefully considering the parameters of the Pozzoli test and putting forward arguments and/or making amendments to the application accordingly. As such, responding to inventive step objections raised by the UKIPO is an area where your representative can often add value in terms of understanding the requirements, and putting forward the types of arguments that are most likely to persuade a UK examiner that the Pozzoli test has been satisfied.

It is interesting to note that the Pozzoli test differs somewhat from the Problem-Solution inventive step test applied by the European Patent Office (EPO). Importantly though, the intention of UK legislators is that both tests should, so far as possible, have the same effect. Moreover, as per the EPO Problem-Solution test, the purpose of the Pozzoli test is to provide an objective assessment of the obviousness of an invention, which the UKIPO and UK courts can apply to the facts and circumstances of the whole spectrum of patent applications and patent decisions. Nonetheless, it is clear, particularly from step (4) of the Pozzoli test, that a considerable amount of individual judgement and interpretation may be required for the assessment of inventive step in the UK. Our representatives have a wealth of experience in navigating the nuances of both the Pozzoli and Problem-Solution­ tests, which may help our clients overcome inventive step objections in the UK and before the EPO.

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