Person skilled in the art meaning

Our observations so far suggest the Unified Patent Court’s approach to inventive step is more all-encompassing, concentrating on whether the skilled person would have been prompted to contemplate the claimed solution and adopt it as a natural progression from the prior art. Further, in contrast to the EPO’s problem–solution methodology, the UPC does not yet appear persuaded that a reasonable expectation of success must be shown to establish obviousness. Given these differing frameworks, there is scope for divergent outcomes on identical facts. Even so, both the UPC and the EPO seem conscious of the danger of inconsistent rulings between the two systems. In this piece, we consider four EPO practices which, though not invariably applied today, may gain traction in the interests of harmonisation, as they arguably align more closely with the UPC’s stance on inventive step. Background The EPO routinely employs the problem and solution approach when assessing whether an invention involves an inventive step. As confirmed by the Enlarged Board of Appeal in Syngenta v HGF,...

Accord Healthcare Ltd and other companies v The Regents of the University of California and another company [2025] EWCA Civ 936 What are the practical implications of this case? Three principal messages from the judgment are summarised below: First, in advancing an obviousness challenge, one must articulate the background that would prompt the notional skilled person or team to conclude that a given step is obvious. The claimant’s expert did not indicate that he approached the question on the footing that the skilled team, after reading the prior art, would be motivated to explore alternatives to it. The expert also failed to set out any objective that a medicinal chemist would be pursuing at any material time whatsoever...

The EBA has released its preliminary view in case G 1/24. The matter addresses how far the description and figures should be consulted when interpreting the claims for the purposes of assessing patentability. Although concise and not binding on the EBA itself, the preliminary view offers an early indication of the EBA’s thinking. Set out below are the three questions put to the EBA by the Board of Appeal in T 0439/22, together with remarks on the EBA’s preliminary view in respect of each question. Question 1—Is Article 69(1), second sentence EPC and Article 1 of the Protocol on the Interpretation of Article 69 EPC to be applied on the interpretation of patent claims when assessing the patentability of an invention under Articles 52 to 57 EPC? Question 1 asks whether the legal provisions used for interpreting claims when defining the scope of protection conferred by a European patent should equally be used for interpreting claims when determining whether the subject-matter is patentable (eg whether it is novel...

Grounds of patent revocation Patents can be revoked (ie taken off the patents register) where they are found invalid in some respect. A revoked patent is treated as though it never existed. The statutory bases for revocation are contained in section 72 of the Patents Act 1977 (PA 1977). These include that the invention is not patentable (eg it lacks novelty, inventiveness or industrial applicability) and that the specification fails to disclose the invention with sufficient clarity and completeness for a person skilled in the art to put it into effect. This deficiency is called ‘insufficiency’. This Practice Note focuses on patent invalidity arising from insufficiency. For details on other invalidity grounds, see the following Practice Notes: Patent invalidity—grounds of revocation Patent invalidity—obviousness Patent invalidity—lack of novelty Claim construction/scope To assess validity and/or infringement, the court must interpret the patent claims—ie ascertain their meaning and extent. For further guidance on claim construction, see Practice Note: Patent infringement—Claim construction/scope...

ARCHIVED: This Practice Note is archived and not maintained. It was originally prepared for LexisAdvance® Practical Guidance Singapore. Grounds for revocation of a patent Under section 80(1) of the Patents Act (Cap 221), a patent can be revoked where: the invention is not patentable — it is not new, involves no inventive step and/or cannot be put to industrial use the grant was made to someone not entitled to it the specification fails to disclose the invention clearly and fully so a person skilled in the art can perform it the specification contains additional matter beyond what the application disclosed an amendment or correction to the specification was wrongly allowed the patent was procured by fraud, misrepresentation, or by non‑disclosure or inaccurate disclosure of prescribed material information there is double patenting for the same invention Any order revoking a patent operates from the date the patent was granted, as provided...

Patents can be revoked (ie struck from the patents register) if, in any respect, they are found invalid. Once revoked, a patent is treated as though it never existed. The statutory grounds are prescribed in section 72 of the Patents Act 1977 (PA 1977). One such ground is that the invention is not patentable. Under PA 1977, s 1, an invention is patentable only if it: is novel (ie not ‘anticipated’) entails an inventive step (ie not ‘obvious’) can be applied industrially is not excluded under PA 1977, s 1(2)–(3) or s 4A This Practice Note focuses on invalidity arising from a lack of inventive step, often called patent obviousness. For guidance on other revocation grounds, see the Practice Notes: Patent invalidity—grounds of revocation Patent invalidity—novelty Patent invalidity—insufficiency Obviousness—general principles To obtain and retain a patent, novelty alone is insufficient; the invention must not be an obvious variation of what has previously...