Review of the Obviousness Test by the UK Patent Office

The Patent Office review¹ says there have been “many recent allegations made about the granting of trivial patents” without saying where these concerns come from². No doubt the recent lobbying from the Open Source community is one source, but curiously another source seems to be in the pharmaceutical industry, as mention is made of access to patented medicines in developing countries. Both the Patent Office review and the Gowers review express concern over the effects of “patent thickets”³. The Patent Office consultation addresses the concern that patenting of small incremental improvements allows such thickets to emerge.

The UK Patent Office review is prompted in part by a 2003 Report of the US Federal Trade Commission on promoting innovation⁴ , which recommends tightening certain aspects of the “obviousness” test in the US and in particular the “commercial success” test and the “suggestion” test.

We can quickly dismiss the relevance of the US concern over the “commercial success” test as regards the UK. The concern in the FTC Report is that the test does not require the patentee to demonstrate that the invention caused the success. By contrast, UK law has for many years required such a nexus (Wildey and Whites v. Freeman (1931) 48 RPC 405). The “commercial success” test is now expanded in greater detail in the well known case of Haberman v. Jackel International [1999] FSR 683 and it would seem unlikely that the Patent Office will wish to shift the bar any higher, as Mandy Haberman has been extremely vocal in her criticism of the UK patent system and her case is held up as a model of how the system should work.

Turning to the “suggestion” test, this is referred to in the FTC report as “the glue expressly leading you all the way” - requiring that the prior art “connect[s] the dots . . . very, very clearly”⁵ and requiring “specific and definitive [prior] art references with clear motivation of how to combine those references”⁶ . But concern is likewise inapplicable to the UK, since this is not the test used in the UK. EPO examiners have much greater latitude in formulating an objective problem faced by one of ordinary skill in the art (which need not be explicitly set out in any prior art reference) and in identifying the solution to the problem in the prior art (i.e. the “glue”), using their own understanding of the common general knowledge of a person skilled in the art at that time.

UK Examiners have the same degree of latitude but the UK Courts (and hence the UK Patent Office) have not fully embraced the EPO’s problem-solution approach to obviousness. The UK Patents Act has the same requirement for inventive step as the European Patent Convention. Like the European Patent Convention, Section 3 of the Act says that an invention shall be taken to involve an inventive step if it is not obvious. Thus non-obviousness is a sufficient test for inventive step, and in the UK it is applied.

The test for obviousness (and non-obviousness) applied by the UK Courts has not changed since the introduction of the European Patent Convention in 1978; Windsurfing v. Tabur Marine [1985] RPC 59 (CA), decided under the previous 1949 Act, remains the leading case. The UK and European approaches have recently been compared by the UK Patents Court in Ranbaxy UK Ltd v. Warner-Lambert Co [2006] FSR 14, and we turn our attention to the Court’s conclusions overleaf.

1. http://www.patent.gov.uk/about/consultations/inventive/
2. Patent Office Consultation Primer Annex A, para. A4
3. Gowers Review Introduction - 4th bullet; Patent Office Consultation Primer Annex A, para. A4
4. see http://www.ftc.gov/os/2003/10/innovationrpt.pdf
5. Executive Summary, page 11, left-hand column
6. Report, page 11, right-hand column