Novelty And Inventive Step Assessment Uk.
1. Introduction: Novelty and Inventive Step in the UK
Under the UK Patents Act 1977, patentability is assessed primarily on novelty and inventive step:
Novelty (Section 1(1)(a)): An invention must be new; it must not form part of the state of the art anywhere in the world before the priority date.
Inventive Step (Section 3): The invention must not be obvious to a person skilled in the art based on the prior art.
The UK aligns with European Patent Convention (EPC) standards, making decisions from the UKIPO and courts consistent with EPO jurisprudence.
2. Assessment of Novelty
2.1 Definition
An invention lacks novelty if every feature of the claimed invention is disclosed explicitly or implicitly in prior art.
Prior art includes patents, publications, public use, or anything accessible to the public before the priority date.
2.2 Key Considerations
Absolute novelty: Any public disclosure worldwide is relevant.
Implicit disclosure: Features must be directly and unambiguously derivable from prior art.
3. Assessment of Inventive Step
3.1 Definition
Also called non-obviousness, an invention involves an inventive step if it is not obvious to a person skilled in the art in view of prior art.
3.2 Problem-Solution Approach
UK courts often apply the Windsurfing/Pozzoli approach:
Identify the skilled person and their common general knowledge.
Identify the inventive concept of the claim.
Identify differences between prior art and claimed invention.
Decide whether these differences would have been obvious to the skilled person.
4. Leading UK Case Laws on Novelty and Inventive Step
Case 1: Windsurfing International Inc. v. Tabur Marine (1985, UK Court of Appeal)
Issue:
Patent dispute over a windsurfing board design.
Court Analysis:
Established the four-step test for inventive step:
Identify skilled person and common general knowledge.
Identify inventive concept.
Identify differences between prior art and invention.
Determine whether differences are obvious.
Outcome:
Claims partially valid; inventive step not found for some obvious features.
Significance:
Foundation for inventive step assessment in UK patents.
Case 2: Pozzoli SPA v. BDMO SA (2007, Court of Appeal)
Issue:
Clarified Windsurfing test for inventive step.
Court Reasoning:
Introduced refined approach:
Consider whether differences require routine skill or ingenuity.
Focus on actual inventive contribution, not hindsight.
Outcome:
Some claims invalidated for being obvious in light of prior art.
Significance:
Standard UK approach today: “Windsurfing/Pozzoli” test is the benchmark.
Case 3: Aerotel Ltd. v. Telco Holdings Ltd. (2006, Court of Appeal)
Issue:
Patentability of a business method implemented via software.
Court Analysis:
Four-step test for technical contribution:
Properly construe the claim.
Identify the actual contribution.
Ask whether it falls solely within excluded subject matter.
Check whether contribution is obvious to skilled person.
Outcome:
Claim invalid; invention was a business method, lacked inventive step.
Significance:
Demonstrates novelty alone is insufficient; technical contribution is required for inventive step.
Case 4: Generics (UK) Ltd. v. H Lundbeck A/S (2007)
Issue:
Patent on citalopram for antidepressant use.
Court Analysis:
Examined prior art including research papers.
Inventive step assessed in context of known chemical class.
Skilled person would consider routine trial and error; contribution considered obvious.
Outcome:
Claims narrowed; some invalidated for lack of inventive step.
Significance:
Emphasizes chemical/pharmaceutical cases often fail inventive step if obvious modifications are routine.
Case 5: Eli Lilly v. Actavis (2009, High Court)
Issue:
Patent for novel dosage form.
Court Analysis:
Assessed novelty: prior publications disclosed similar compounds.
Inventive step: combination of features evaluated using Windsurfing/Pozzoli.
Claims valid because synergistic technical effect was not obvious.
Outcome:
Patent upheld; inventive step recognized.
Significance:
Illustrates that synergistic technical effects can demonstrate inventive step.
Case 6: Fujitsu Limited v. Unwired Planet (2015, Patents Court)
Issue:
Software-related invention for mobile communication.
Court Analysis:
Claimed software feature assessed for technical contribution.
Novelty confirmed; inventive step questioned.
Court emphasized difference must produce non-obvious technical effect.
Outcome:
Some claims valid; others invalidated for obvious implementation.
Significance:
Reinforces technical contribution requirement for inventive step, particularly in software.
Case 7: Smithkline Beecham v. Apotex (2004, Patents Court)
Issue:
Pharmaceutical patent on combination therapy.
Court Analysis:
Novelty assessed by checking all prior art references.
Inventive step considered using routine experimentation: if skilled chemist could arrive at invention easily, claims invalid.
Outcome:
Partial invalidity; some claims held valid.
Significance:
Reinforces importance of routine experimentation in assessing inventive step.
5. Key Principles for Novelty and Inventive Step in the UK
| Principle | Explanation |
|---|---|
| Absolute Novelty | Any prior disclosure globally destroys novelty |
| Inventive Step / Non-obviousness | Must not be obvious to skilled person using common general knowledge |
| Windsurfing/Pozzoli Test | Standard framework for inventive step |
| Technical Contribution | Software, business methods, and routine chemical modifications often fail if no technical effect |
| Synergistic Effect | Novel combination producing unexpected effect can satisfy inventive step |
| Routine Experimentation | If invention obvious through standard techniques, inventive step fails |
6. Conclusion
Novelty and inventive step are critical gates for UK patentability.
Novelty: No prior disclosure anywhere in the world.
Inventive step: Contribution must be non-obvious and involve technical ingenuity.
UK case law (Windsurfing, Pozzoli, Aerotel) provides well-established tests.
Pharmaceutical, chemical, and software patents require careful technical effect demonstration to pass inventive step assessment.
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