Is There a Step Between ‘Inventive’ and ‘Nonobviousness’?
September 12, 2023
Jeffrey Lewis and Stuart Knight were published in Life Sciences Intellectual Property Review discussing the shared language and differences between the US, EU and UK standards for 'inventive' and 'nonobvious.' This article highlights a few key differences that people who practice patent law should know, if the patents have international relevance.
Key Takeaways:
Although the “nonobviousness” test in the USA and the “inventive step” test in the UK/EPO both ask whether an invention is “obvious”, they have evolved into very different tests.
In the UK, for instance, the question is focused on the “inventive concept” while in the USA it’s the “claims at issue.” In the EPO, on the other hand, the analysis starts with the closest prior art and objective technical problem to be solved before determining whether the claimed invention would be obvious to a skilled person. Each jurisdiction also has different standards for identifying prior art and how relevant “objective indicia” and “secondary considerations” are to patentability.
As one example of how these differences can manifest, EPO’s problem/solution approach may result in a much more anti-patentable outcome than under the USA and UK frameworks where identifying the problem is, itself, the invention.
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