Is the Invention Obvious? The Approaches of the EPO and The English Courts Considered

Introduction

The English Court of Appeal has suggested that the "Problem and Solution" (PSA) approach, much used by the EPO when considering obviousness, should be considered to be an "administrative tool" only which does not necessarily lead to the "correct" answer.

Obviousness in the Courts and at the EPO

In Actavis v Novartis [2010] EWCA Civ 82, 17th February 2010 the English Appeal Court considered the decision making process of the EPO when determining if an invention is obvious. In this case, the English courts concluded that the claims of European patent (UK) No. 0948320 of Novartis were obvious. In upholding the judgement of the lower court, the Court of Appeal considered the proper test for obviousness, and concluded that the Problem and Solution (PSA) approach used in the EPO had problems.

The claims of the patent related to sustained release pharmaceutical compositions comprising a water soluble salt of fluvastatin as an active ingredient. The claims required that the active ingredient be released from the sustained formulation over more than three hours. The prior art showed that fluvastatin was a known statin. Fluvastatin sodium was also known, and the concept of sustained release was well known and well understood.

Obviousness in the English courts

In giving judgement, Jacob LJ considered the law of obviousness and explained the structured approach which is generally to be used. This was set out in the earlier case, Pozzoli v BDMO [2007] FSR 37, which provides four steps, as follows:

(1)(a) Identify the notional "person skilled in the art"

(b) Identify the relevant common general knowledge of that person;

(2) Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;

(3) Identify what, if any, differences exist between the matter cited as forming part of the "state of the art" and the inventive concept of the claim or the claim as construed;

(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?

Obviousness in the EPO

In the EPO, and as set out in their guidelines, an Examiner should normally apply the PSA, which has three main stages, as follows:

(1) Determine the "closest prior art",

(2) Establish the "objective technical problem" to be solved, and

(3) Consider whether or not the claimed invention, starting from the closest...