‘Classic’ Inventive Step - The Important Issues for IP Lawyers & Patent Attorneys
To obtain a patent in Europe, the invention claimed must embody an inventive step over the prior art. This is often the principal ground on which patent validity is challenged and getting it right is critical in disputes.
To determine whether there is an inventive step, the statutory question asks:
‘Is the invention obvious to a person skilled in the art?’
However, this is often at risk of being replaced by different sub-tests and paraphrases, such as the obvious-to-try test.
The difficulties encountered when straying from the statutory test have most recently been exemplified by the Actavis Group v ICOS Corporation cases, which recently culminated in a judgment from the Supreme Court.
This decision reiterates the central place of the statutory question, but also provides a list of factors that may assist to answer it.
This webinar will assist IP lawyers to navigate these important issues of 'classic' inventive step law.
What You Will Learn
The webinar will cover the following:
- The statutory basis of inventive-step in the UK and its European context
- The key dos and don'ts of approaching obviousness (Windsurfing/Pozzoli)
- The role of secondary indicia
- Motivation and the 'obvious-to-try' test
- The dangers of straying from the statutory test - the Actavis Group v ICOS Corporation cases
- A brief look at the role of plausibility as an addition to 'classic' inventive-step assessment
This webinar was recorded on 8th October 2019