Emeritus Professor Michael D Pendleton

Copyright, 2017
 Certain areas of IP do not lend themselves to
even theoretical objective or empirical
assessment. Non-obviousness in patent law is
one. Substantial part in copyright, our next
seminar, is another.
 This has enormous implications for the real
and book value of patents.
 The various tests for non-obviousness across
jurisdictions
 "The word 'obvious', as Sir Lionel agreed, and as
its derivation implies, means something which
lies in the way, and in the context of the Act is
used in its normal sense of something which is
plain or open to the eye or mind, something
which is perfectly evident to the person thinking
on the subject.“ Olin Mathieson v Biorex (1970)
RPC 157 at page 188
 " 'Obvious' is, after all a much-used word and it
does not seem to us that there is any need to go
beyond the primary dictionary meaning of 'very
plain'". General Tire & Rubber Company v
Firestone Tyre and Rubber Company Ltd (1972)
RPC 457 at page 497.
 Unlike novelty, there are many tests applied by the courts
to assess inventive step.
 Thus, as was said by Cooper J in Winner & Anor v Ammar
Holdings Pty Ltd 25 IPR 273 at page 294, (1993) AIPC 90-971
at page 39,248:
 "In order to ascertain whether or not the subject matter
sought to be patented was beyond the skill of the calling,
the courts have adopted a number of different approaches
directed to the same end: for example, was the invention
obvious or not?; does the invention solve an important
problem "unsuccessfully attacked by previous inventions"?
(Wood v. Gowshall (1937) 54 RPC 37 at 39)."
 The following tests typify the basic approaches which the
courts have used to establish obviousness:
 "The test is whether the hypothetical addressee faced with
the same problem would have taken as a matter of routine
whatever steps might have led from the prior art to the
invention, whether they be the steps of the inventor or
not." [Aickin J in Wellcome Foundation Ltd v VR
Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 at page
286]
 “...was so obvious that it would at once occur to anyone
acquainted with the subject, and desirous of accomplishing
the end." [Allsop Inc & Another v Bintang Ltd & Ors 15 IPR 686
at page 701, (1989) AIPC 90-615 at page 39,332]
 "Would the notional research group at the relevant date in all
the circumstances ... directly be led as a matter of course to
try [the invention claimed] in the expectation that it might
well produce [a useful desired result]." [Olin Mathieson v
Biorex (1970) RPC 157 at page 187, and approved by the High
Court in Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA
59 (12 December 2002)]
 "In the case of a combination patent the invention will lie in
the selection of integers, a process which will necessarily
involve rejection of other possible integers. The prior
existence of publications revealing those integers, as separate
items, and other possible integers does not of itself make an
alleged invention obvious. It is the selection of the integers
out of, perhaps many possibilities, which must be shown to be
obvious." [Minnesota Mining & Manufacturing Co v Beiersdorf
(Australia) Ltd (1979-80) 144 CLR 253 at page 293]
 "so easy that any fool could do it" [Edison Bell v Smith (1894)
11 RPC 389 at page 39
 Courts have also discussed the problem of ex post facto dissection of the
invention. In Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR
228 at page 242, Aickin J said that "subsequent analysis of the invention -
'the dissection of the invention' - is not helpful in resolving the question of
obviousness".
 An approach used by the courts to avoid this problem is the "problem-
solution" approach. See HPM Industries Pty Ltd v Gerard Industries Ltd, 98
CLR 424 at page 437, where Williams J said:
 "If the invention were novel it would nevertheless fail for want of subject
matter if in the light of what was common general knowledge in the
particular art, it lacked inventive ingenuity because the solution would have
been obvious to any person of ordinary skill in the art who set out to solve
the problem."
 Other examples are Hart v Hart, 141 CLR 305, Allsop Inc & Another Inc v
Bintang Ltd & Ors 15 IPR 686, (1989) AIPC 90-615 and Winner v Ammar
Holdings 25 IPR 273, (1993) AIPC 90-971.
 The "problem-solution" approach is based on the question of whether the
claimed invention would have been obvious to a person skilled in the
relevant art when faced with a particular problem. The frame work of the
"problem-solution" approach inherently embodies what happens in practice
and covers the statutory framework. Given this, examiners should not be
taking any inventive step objections without using the "problem-solution"
approach and formulating a problem from the specification itself.
 "It is frequently possible to take, as it were, a patent to
pieces, and then, beginning with one piece, to show
how, in order to obtain one result, step A must be taken;
in order to obtain another particular result, step B must
be taken - and so on until one has the whole combination
for which inventive quality is claimed. If the analysis is
taken into sufficient detail, every single step in the
development of an invention, taken separately, can be
shown to be obvious."
 "But, in the present case, the evidence of the expert
witnesses for the defendant is really a reconstruction of
an inventive process step by step, each step, when it is
known that it must be taken in a certain direction, being
obvious enough in itself.“ Palmer v Dunlop Perdriau
Rubber Co Ltd (1937) 59 CLR 30 at page 61
 If a claim is a mere technical equivalent of the prior art, it
will not be inventive.
 A technical equivalent occurs when integers of a claim are
replaced by one or more features, and:
 the features of the replacement are part of the common
general knowledge of the person skilled in the art and
provide the same functionality in the context of the
problem
 the replacement by the feature would at once occur to the
person skilled in the art (Allsop v Bintang 15 IPR 686,
(1989) AIPC 90-615; Elconnex Pty Ltd v Gerard Industries
Pty Ltd (1993) AIPC 90-984)
 the combination as a whole retains the same functionality
in the context of the problem
 there are no problems or difficulties to be overcome in
making the replacement
 If a claim is a mere workshop improvement over the prior art, it will lack an
inventive step.
 The expression "workshop improvement" refers to an alteration to an existing device
which the person skilled in the art would have come to as a matter of routine,
"proceeding along previous lines of inquiry and having regard to what was known or
used" (Nicaro Holdings Pty Ltd v Martin Engineering Co 16 IPR 545).
 A workshop improvement can occur:
 where the prior art fully solves the identified problem, if the person skilled in the art
would readily recognize a practical difficulty in that solution, and that practical
difficulty would be readily overcome by the person skilled in the art appraised of the
common general knowledge.
 where the prior art does not provide a solution to the identified problem, if the
solution would at once suggest itself to the person skilled in the art (see Fallshaw
Holdings Pty Ltd v Flexello Castors and Wheels Plc 26 IPR 565 and Winner v Ammar
Holdings Pty Ltd 25 IPR 273, (1993) AIPC 90-97, or
 where the prior art solves an analogous problem in a related area of technology, and
the person skilled in the art would recognise the same solution could be applied to
the problem with there being no practical difficulty in implementing that solution.
(However, note that the prior art must be one which the person skilled in the art
would be reasonably expected to have ascertained, understood, and regarded as
relevant.)
 It may be difficult to determine when a feature is a "mere workshop improvement"
and when it involves an inventive step:
 Where:
 there is only one option the person skilled in the
art would consider in solving either their identified
problem (or any subsequent practical difficulty)
 that option would at once suggest itself to the
person skilled in the art, e.g. the option is part of
the common general knowledge of the person
skilled in the art
 there is no practical difficulty in implementing
that option, and
 neither the prior art, nor the common general
knowledge, teaches away from the solution
 there will be no inventive step.
 It may be that in following the one obvious option, a bonus
and unforeseen effect is produced. However the presence
of that bonus effect does not itself give rise to an
inventive step, because the person skilled in the art would
inevitably have arrived at that solution:
 "That which Grace produced might have had some of the
desirable qualities of a multi-layer heat shrinkable
packaging in a higher degree than might have been
expected, or was in fact expected. And it might have
demonstrated a better combination of properties, that is
to say proving some properties while at least not
detracting from others. But at most the end result was a
heat shrinkable bag, better not because of any inventive
discovery of Grace, but because somebody else's new
product, put on the market for uses which included that
manufacture, produced better results than expected.“
Asahi Kasei Kogyo KK v WR Grace & Co (1992) AIPC 90-847
at page 38,089
 It may be that the prior art (in the light of
common general knowledge) will suggest to the
person skilled in the art a number of possible
solutions to the problem. In this event:
 "The pursuit of one of a number - perhaps many -
obvious lines of research may produce a signal or
particularly valuable discovery. In deciding on
patentability it would seem to us regrettable,
and not in accord with a primary purpose of
patent law, to have to rule this out automatically
in the name of obviousness."
 Beecham Groups Limited's (New
Zealand/Amoxycillin) Appln (1982) FSR 187 at
page 192
 Lucas and Another v Gaedor Ltd and Others (1978) RPC
297 at pages 376, 377
 Where a claimed solution:
 is one of several options that the person skilled in the art
would consider in solving either their identified problem
(or any subsequent practical difficulty)
 the options would at once suggest themselves to the
person skilled in the art, e.g. the options are part of the
common general knowledge of the person skilled in the
art, or clearly indicated in the prior art
 there is no practical difficulty in implementing the
particular solution claimed, and
 neither the prior art, nor the common general knowledge,
teaches away from the particular solution
 there will be an inventive step objection.
 "There were alternatives which might be tried only to be discarded,
but the fact that there were a number of alternatives, cannot, I
think, elevate into the head of invention the step taken by Lucas."
 Lucas and Another v Gaedor Ltd and Others (1978) RPC 297 at pages
376, 377
 Where a claimed solution:
 is one of several options that the person skilled in the art would
consider in solving either their identified problem (or any
subsequent practical difficulty)
 the options would at once suggest themselves to the person skilled
in the art, e.g. the options are part of the common general
knowledge of the person skilled in the art, or clearly indicated in the
prior art
 there is no practical difficulty in implementing the particular
solution claimed, and
 neither the prior art, nor the common general knowledge, teaches
away from the particular solution
 there will be no inventive step.
 UK law equates "obvious to try" with "worth a
try" and "well worth trying".
 United States, Canadian and Australian law
on obviousness rejects this approach.
 In the US, any criterion which adopts a notion of "obvious to
try" has been rejected in a long series of decisions on '103 of
the 1952 US Act. The US decision in re O'Farrell 853 F 2d 894
(1988) distinguished the tests of "obvious to try" and "obvious"
by referring to two kinds of errors which occur when applying
the standard of "obvious to try":
 "In some cases, what would have been "obvious to try" would
have been to vary all parameters or try each of numerous
possible choices until one possibly arrived at a successful
result, where the prior art gave either no indication of which
parameters were critical or no direction as to which of many
possible choices is likely to be successful.......in others, what
was "obvious to try" was to explore a new technology or
general approach that seemed to be a promising field of
experimentation, where the prior art gave only general
guidance as to the particular form of the claimed invention
or how to achieve it."
 Canadian Supreme Court decision (Faberwerke
Hoecht A/G v Halocarbon (Ontario) Ltd (1979),
42 C.P.R. (2d) 145 at 155) noted that:
 "Very few inventions are unexpected discoveries.
Practically all research work is done by looking
at directions where the "state of the art" points.
On that basis and with hindsight, it could be said
in most cases that there was no inventive
ingenuity in the new development because
everyone would then see how the previous
accomplishments pointed the way."
 As with novelty and infringement, the
method of interpretation of the patent
specification is central to non-obviousness.
 Purposive construction in Anglo
Commonwealth & Europe.
 Literal construction supplemented by
doctrine of equivalents in US & China.
 Changes to British law wrought by the
European Patent Convention Article 69 &
Protocol.
 US law virtually identical to British law pre
European Patent Convention – strict
literalism subject to doctrine of equivalents.
 Per Lord Hoffman – architect of
Improver Questions
 EPO is a hormone for the production
of red blood cells by bone marrow.
The plaintiff had first sequenced EPO
and then synthesised it by the
expression of an endogenous gene
 The defendant synthesised EPO
through expression of an exogenous
gene. Held to be obvious.
 Sequencing DNA mere discovery or invention. If
invention merely obvious?
 The case law.
 The case law.
 Reasonable tribunals can reasonably disagree
with whether an invention is obvious or not.
 Millions, sometimes billions, of dollars of
investment in a patent turn on this judgment
call.
 There is generally no presumption of validity
of a patent once granted.
 This is an “obvious” area for law reform.