Patents - Inventive?

31 January 2008

By Ben Evans

For a patent to be registrable it must involve an inventive step.

An invention is considered to involve an inventive step if it is not obvious to a person 'skilled in the art'.

So there are two aspects to consider here firstly whether or not an invention is obvious and secondly who is a person 'skilled in the art'?

Obvious

This is regarded as one of the most difficult questions in patent law. The question of obviousness must be considered at the same time as that of a person 'skilled in the art', there has been much debate about this point but recent case law from across the pond has suggested that an invention will not be obvious if it woud have been developed 'in the ordinary course' of events within the relevant industry.

Skilled in the Art

Section 3 of the 1977 Act makes it clear that obviousness should be considered from the point of view of the average person skilled in the art. The question then is who is 'skilled in the art'?. The Courts have considered this point in a logical sense as someone with the attributes, skills, background knowledge and qualifications relevant to the field in which they work (Technograph Printed Circuits v Mills & Rockley (Electronics) [1972].

As you can see Patents are a complicated area of the law and care should be taken in any applications to avoid undue costs.

Ben Evans is an Intellectual Property Executive at Lawdit.