Obviousness and IP: time to reconsider

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On 6 February, the day this editorial was written, the United Kingdom Patent Office surprised members of the local intellectual property professions when it launched an unexpected discussion paper, Consultation on the Inventive Step Requirement in United Kingdom Patent Law and Practice and sought informed response by 31 May. On the assumption that the provisions of patent law are intended to reflect a balance between the complementary and sometimes conflicting interests of inventors, the public at large, and the British economy, the paper seeks to probe two lines of enquiry. First, responses are sought as to whether too many ‘trivial’ patents are being granted. Secondly, it wants to know whether respondents regard innovation and competitiveness are best served by ‘easy patenting with low hurdles’. Serving the best interests of the patent-using professions and the grant of trivial patents are not necessarily incompatible. The high cost and considerable effort that must be expended in procuring patent protection itself operates in many instances as a selection mechanism, encouraging most patent applicants to direct their resources to obtain patents that are not trivial but have some genuine substance. Nor does the fact that a patent is invalid for lack of inventive step constitute a proof that it is trivial; no commercially aware industrial company would commit large resources to the protection or enforcement of trivia. A ruling of obviousness means in most countries that a court or patentissuing body has ruled that a hypothetical uninventive person, skilled in what has a painstakingly assembled prior art, has been considered capable of making that invention with no faculty more creative than the ability to draw upon that prior art—which might be quite elderly by the time the issue is argued before a court. The present patent system is perfectly capable of generating trivial patents and does so regularly, as any number of humorous publications and websites can testify. However, triviality is not in itself a ground for invalidity of a patent and most trivial patents rarely pose problems. If a patent has no genuine market role, it is unlikely to be the subject of use by its owner or of infringement by third parties. It is worth reflecting that a requirement of nonobviousness is not found in the law on the protection of the two other major statutory intellectual property rights: trade marks and copyright. Trade mark law is driven by the need for a sign to distinguish goods or services of one business from those of others, a need that sidelines obviousness. Where the choice of a trade mark is ‘‘obvious’’ through the use of a purely descriptive term such as SUPER-STICK for glue, it is the term’s inherent inability to distinguish, and/or the perceived need to keep that term available for descriptive use, that will prevent it being protected. Even then, where through its continued use such a term acquires distinctive character, its obvious nature is no bar to its registration. Copyright too employs no ‘‘obviousness’’ doctrine. Although the notion of inventive step is deeply entrenched in modern patent law, at both international and regional levels, there is strong reason for challenging its continued role. The requirement of novelty demands that patentable inventions be new— a criterion that is objectively assessed and that can generally be ascertained by diligent search. Obviousness, however, is a phenomenon of conjecture: expensive to construct, subjective to assess, unpredictable, and unproductively time-consuming in its mode of assessment. If any proof were needed of this, just take a look at the typical opposition proceedings taking place before the European Patent Office. The current initiative on re-evaluating the inventive step should be applauded. Unfortunately it will almost certainly be buried in the unmarked grave of stillborn initiative. Where normative intellectual property law is highly harmonized and countries strive to achieve a level playing field in their patent protection, it is unlikely that any movement for change will gather momentum if it starts at the periphery, with a single jurisdiction, rather than at the centre through the World Intellectual Property Organization or the European Patent Office.