Slade LJ said: ‘If the plea of obviousness is to succeed, the court has to be satisfied that it would have appeared to the hypothetical technician, skilled in the art but lacking in inventive capacity, worthwhile to coat the helix of a self-pulling corkscrew with a friction-reducing material for purpose (a) or purpose (b) above or both of them. As cases such as Technograph and Beecham show, he is not to be expected to take steps or try processes which he would not regard as worthwhile. In using the word ‘worthwhile’, we mean worthwhile as a possible means of achieving or assisting in practice the objective which he has in view. This, we infer, was what the judge had in mind in saying that the word ‘obvious’ in section 3 is directed to whether or not an advance is ‘technically or practically obvious’. We do not think that the hypothetical technician must also be taken as applying his mind to the commercial consequences which might follow if the step or process in question were found in practice to achieve or assist the objective which he had in view. As Oliver L.J. said in the Windsurfing case, [1985] R.P.C. 59 at page 72, ‘What has to be determined is whether what is now claimed as inventive would have been obvious, not whether it would have appeared commercially worthwhile to exploit it’. We thus agree with the judge that the word ‘obvious’ in section 3 is not directed to whether an advance is ‘commercially obvious’. We do not think that he misdirected himself in the relevant passage of his judgment.’
Judges:
Slade LJ
Citations:
[1991] RPC 195
Statutes:
Jurisdiction:
England and Wales
Cited by:
Cited – Rocky Mountain Traders Limited and Hewlett Packard Gmbh; Westcoast Limited and Fellowes Manufacturing (UK) Limited CA 20-Dec-2000
The claimant appealed an order finding its patents for mechanisms for labelling CDs invalid for obviousness.
Held: the judge had applied the correct tests for obviousness, and the view taken by the judge of the expert evidence was not open to . .
Cited – Generics (UK) Ltd and others v H Lundbeck A/S HL 25-Feb-2009
Patent properly granted
The House considered the patentability of a chemical product, citalopram made up of two enantiomers, as opposed to the process of its creation, questioning whether it could be new or was insufficient within the 1977 Act.
Held: The appeal . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Updated: 07 May 2022; Ref: scu.188265