Inventive step : the ultimate bar to patentability

Abstract

Patents provide a means for protecting the physical embodiments of certain classes of new and useful inventions. Patents are the broadest form of intellectual property protection, encompassing not only the precise machine or process invented, but also variant machines or processes that may employ the underlying concept of the invention. The owner of a patent can therefore control and be rewarded for its use, and this encourages further innovation and creatjyity to the benefit of all the community. An invention is the result of an inventive act: it comprises ( 1) a mental operation involving the conception of an idea, and (2) a physical operation involving the reduction to practice of the inventive concept. Invention is the product of original thought: it is a concept, a thing evolved from the mind. But what distinguishes an invention worthy of a patent from a mere improvement or an obvious combination of existing technology? A patent system must come to grips with this ambiguous determination. To be protected by a patent, an invention must, in general, be of practical use and it must show an element of novelty, that is, some new characteristic that is not known in the body of existing knowledge (called "prior art") in its technical field. The invention must show an inventive step that could not be deduced by a person with average knowledge of the technical field. Finally, its subject matter must be accepted as "patentable" under national law. The subject of this thesis is a requirement of patentability, once described by a Canadian judge as an 'impalpable something'1 that distinguishes inventions from things otherwise produced, an expressive phrase coined since 1891 in reference to the hallmark of genuine invention. The legions of cases in various states that have been concerned with the issue of inventive step have managed to provide us with numerous phrases and descriptions, but it has thus far seemingly escaped clear judicial definition. This wealth of terminology, much of it redundant, has served to confuse the issue and, to some extent shelter the requirement from clear judicial analysis." The courts have consistently held that this requirement is essential for patentability, and it is of course explicitly provided for in both international conventions and national laws. The practitioner is confronted with the issue of obviousness or inventiveness more often than with any other single issue. Its assessment is in the end always a matter of evaluation and judgment. So far as primary legislation is concerned, the inventive step requirement is common ground between most patent systems. Divergence between countries on the level of inventive step in their patents should therefore be attributable to different implementation of this requirement, and a comparison of the standards for assessment of inventive step, as it is called in Europe and Japan, or obviousness, as it is called in the United States will be an important point of interest in this thesis. Due to the fact that inventive step within the local fora has been introduced fairly recently and there is no form of precedent or any local case law on the matter, for the purposes of this dissertation I will have to draw from comparative law. Within the different national systems there are varying requirements as to the degree of inventiveness of the inventive step. An appraisal of the sources of the differences in the standards of assessment and the implications of having different legal standards in different countries are included. Notwithstanding the considerable progress in the field of international patent law harmonisation already achieved, for example through the Paris Convention for the Protection of Industrial Property, existing regional patent systems, the Patent Cooperation Treaty and the Trade Related Aspects of Intellectual Property Rights Agreement, the international patent system as it stands still fails to provide users with full worldwide harmonisation of the major substantive aspects of patent law. I shall address the need for regional and world-wide harmonisation and the attempts under WIPO auspices to establish a set of uniform substantive rules on key aspects of patent law, with great attention to inventive step, which would lead, if successful, to a deep harmonisation in this field.