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A patent may be granted only for an invention that involves an inventive step. The UK Patents Act 1977 specifies that an invention shall be taken to involve an inventive step if it is not obvious to a person skilled in the art, having regard to any matter (such as a prior art document) that forms part of the state of the art.
 
The legal test for obviousness
The English courts have developed their own test for assessing inventive step. The test is intended to be objective, focussing on the differences between the prior art and the patent under attack. The courts then assess – with the help of expert witnesses – whether those differences would have been obvious to the skilled person, or whether they require any degree of invention.
 
The role of expert witnesses
The key to an effective obviousness attack on a patent in the English courts is to get a good technical expert who is able to distil the subject-matter of the prior art and the patented invention down to a few essential differences and then provide the court with a credible perspective on whether those differences are significant.
 
Inventive step in the European Patent Office (EPO)
The EPO’s test for assessing inventive step is different from the English court’s test. The EPO adopts a ‘problem-and-solution’ approach. The EPO’s problem-and-solution approach does not necessarily produce a different result from the English court’s test, but there have been a number of decisions in which the English courts have declined to follow the findings of the EPO in relation to inventive step. For more information about the differences between the approach of the English courts and the EPO in relation to inventive step, please contact us.
 
Insufficiency
The Patents Act 1977 provides that the court can revoke a patent for an invention on the ground that the specification of the patent does not disclose the invention clearly enough and completely enough for it to be performed by a person skilled in the art. Put another way, the disclosure contained in the patent specification does not enable the skilled person to make the invention work. In the case of Amgen v TKT, one of Amgen’s claims to recombinant erythropoietin (epo) contained a test to distinguish epo made according to Amgen’s process from prior art epo, by means of molecular weight. Unfortunately, it was not clear what reference product was to be used for this comparison. This lack of clarity in the patent claims gave rise to a ground of insufficiency.
 
Added Matter
The Patents Act 1977 provides that the court can revoke a patent for an invention on the ground that the subject matter disclosed in the patent specification extends beyond that disclosed in the application for the patent, as filed. The issue of added matter often comes up when the patentee proposes amendments to the patent claims. An added matter objection can be an important weapon in an attack on validity. Because the test for added matter is strict, it can often be difficult for the patentee to escape a finding of invalidity, if added matter is found.
 
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