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Case law: Decision makes patents more liable to challenge, and inventions harder to register

Patent owners and inventors are now more vulnerable if their patents are challenged, or they apply for patents for their inventions, following a new test of whether or not an invention involves an inventive step, following a High Court decision.

Legal Alert

This update was published in Legal Alert - December 2014

Legal Alert is a monthly checklist from Atom Content Marketing highlighting new and pending laws, regulations, codes of practice and rulings that could have an impact on your business.

A UK or European patent will not be awarded in respect of an invention unless, among other criteria, it involves an ‘inventive’ step. A step is inventive if it would not be obvious to someone with the common general knowledge of a reasonably skilled person in the relevant field.

Similarly, anyone accused of infringing a patent may counterclaim that it is invalid or should be revoked on grounds the invention would be obvious to someone with the common general knowledge of a reasonably skilled person in the relevant field.

In a recent case, the High Court set out three classes of knowledge that are to be treated as common general knowledge in a particular field:

  • Knowledge available in standard reference works and a few leading journal articles.
  • Articles which are "sufficiently prominent in the main academic journals in the field".
  • Other journal articles, outside the leading journals and "not have been likely to have been read by the notional skilled person in the ordinary course of keeping himself up to date" but which could easily be found by anyone making a “literature search and review".
The third class means that knowledge which is readily accessible via, for example, the internet or a database of articles, is now likely to be treated as within the common general knowledge of the notional skilled person for the purposes of deciding whether an invention involves an inventive step. This means the ruling has made it harder for an inventor to argue that a step is inventive.

Operative date

  • Now

Recommendations

  • Patent owners should review whether their inventions are, as a result of including readily-accessible articles in the definition of ‘common general knowledge’, now vulnerable to invalidity or revocation counterclaims if the owner tries to enforce their patent against infringers.
  • Inventors considering applying for a patent should ensure they research whether there are easily accessible articles on the internet or a database before applying, as information available from such sources will now be treated as part of the common general knowledge of a notional skilled person when deciding whether the invention involves an inventive step, and can therefore be registered.
Case ref: AB Teva UK Ltd & Anor v Astrazeneca AB (Rev 1) [2014] EWHC 2873

Disclaimer: This article from Atom Content Marketing is for general guidance only, for businesses in the United Kingdom governed by the laws of England. Atom Content Marketing, expert contributors and ICAEW (as distributor) disclaim all liability for any errors or omissions.

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