A Study on the Patent Law Standard of Non-obviousness: Chapter 5

Summary

In this report, the standard by which obviousness is determined in Canada, the United States and Europe has been reviewed. The way in which inventions are judged is fairly similar between Canada and the United States, whereas the European Patent Office approaches the problem in a substantially different manner.

The determination of obviousness is a factual determination. In all jurisdictions, there must be a determination of the invention, or the problem to which the invention is directed. There must then be an assessment of the prior art, whether it is the closest prior art as considered in European practice, or relevant prior art as determined in Canadian and United States practice. Once the prior art has been identified, it then must be determined whether a person of ordinary skill in the art having knowledge of the prior art, and the common general knowledge which such a skilled person would possess, would consider the invention as non-obvious, or involving an inventive step.

The determination of obviousness is not only a factual determination, but it is also a subjective determination. The Patent examiner, or the Patent Appeal Board, or the judges in the courts, must place themselves in the shoes of this mythical man at the time the invention was made, or at the time at which obviousness is to be judged, and determine whether the advance made in the art is merely a workshop improvement, or the result of an exercise of the inventive faculty. This is not an easy task to perform.

It is well recognized within the field that the standard of non-obviousness must be applied equally from one field of technology to another. A floating standard, or a standard of non-obviousness which is applied differently to different field of technology, would result in great uncertainty. This requirement for a uniform application of the standard of non-obviousness is recognized in Canada, the United States and Europe, and I presume could be extended to other jurisdictions throughout the world if this study were so extended.

In our extensive review of Canadian Court decisions and decisions of the Canadian Patent Appeal Board, it is our conclusion that the criteria used by the Courts and by the Canadian Patent Office, in determining non-obviousness do not differ from one field of technology to another. The test of obviousness, whether it be the Cripps^{Footnote (125)} question or the Cripps question as applied in the Beecham Canada Ltd. v. Procter & Gamble Co.^{Footnote (126)} , or more recently in the Beloit Canada Ltd. v. Valmet OY^{Footnote (127)} is the same for all fields of technology.

What is not constant, and what varies through time and through the development of a technology, is the benchmark to which obviousness/non-obviousness is to be judged. This benchmark is the unimaginative skilled technician, his common general knowledge, and the applicable prior art.

As the technology develops, the skill and the common general knowledge of the ordinary workman in the pertinent art increases. It is this yardstick, against which obviousness/non-obviousness is judged, which changes as the technology develops. Thus, the test for obviousness is still based on the Cripps or the modified Cripps question, but the general knowledge of the unimaginative skilled technician changes throughout the development of a technology. Furthermore, the literature and the information available to him to determine obviousness (prior art) changes as the field or technology develops. What would appear obvious or non-obviousness to this unimaginative skilled technician will change through the development of the technology.

This point has been accepted by Canadian Courts as discussed, for example, in Monsanto Co. v. Commissioner of Patents^{Footnote (128)} . As the field of technology develops, so does the knowledge of the unskilled technician and the common general knowledge from which he can draw. A similar conclusion was also reached in a review of the standard of obviousness as applied to chemical patents as the field of chemistry developed. It is our position that the standard does not change throughout the development of the technology, but what changes is the benchmark to which the standard is to be judged. Thus, the benchmark to which the standard of non-obviousness is judged, is a continually evolving benchmark which continues to change as the field of technology develops.

In the United States, there has been great concern expressed regarding the application of the standard of non-obviousness in the United States Patent and Trademark Office, specifically with regards to the emerging technologies of biotechnology and computer related technologies. In these areas, it was generally held that the application of the standard of obviousness was higher than in other areas of technology. There were many reasons given for this imbalance. For example, in these new areas of technology, there is a large body of new examiners, who lack legal training. As a result, it was felt that examiners frequently act as scientific peer reviewers in the biotechnology area, rather than as patent examiners. They often spend more time and effort critiquing the science than examining the patentability question. Inadequate search files in some cases, such as the software area, was also cited as a problem. It is proposed that the main reason for this higher standard of non-obviousness being applied, especially in the biotechnology area, reflects the higher skill that the biotechnology examiners bring with them to their task in determining the question of obviousness. They are perhaps reviewing patent applications not through the eyes of the unimaginative skilled technician, but through their own eyes, thus perhaps defining a higher skill, to the skilled technician than the law dictates. Thus, it is proposed that the United States patent examiners, in the biotechnology field in particular, are not using the correct yardstick to judge the question of non-obviousness.

In Canada in the biotechnology area, it was found that very few objections on obviousness are raised by the Canadian biotechnology examiners. The biotechnology examiners feel that as this technology is very new, it is difficult to say that an invention is obvious. At the present time the examiners feel that since there is not much known about the field, this field is very unpredictable and, thus, most inventions are considered non-obvious. They, however, recognize that as the field develops there will be an increase in the skill of the ordinary workman, and thus, one would expect to see more obviousness rejections raised by the Canadian biotechnology examiners.

Thus, at present, the Canadian biotechnology examiners have set the skill of the skilled technician and the common general knowledge which he brings with him to assess the invention as very low. The examiners' assessment of the unpredictability of the field, results in a different problem which is not seen in the United States. There is a reluctance by Canadian biotechnology examiners to allow any claims which go beyond the provided examples in an application. The examiners, thus, are attempting to restrict the applicant to the proved utility of their invention, and not its predicted utility. This is contrary to Canadian case law and Canadian practice in other fields of technology. This problem is really a question of sufficiency of disclosure and the definition of "sound prediction" which is outside the scope of the present study and, thus, has not been reviewed in any detail.

Thus, from our review, we could find no evidence of a different standard of obviousness being applied across different fields. In the area of biotechnology, the same standard of obviousness is being applied as in other fields. What does change is the yardstick against which inventions are judged. This yardstick includes the person skilled in the art; the common general knowledge in a particular field of invention which this skilled person brings to the task; and the prior art, against which the person skilled in the art will determine the question of non-obviousness. The level of the skill of a person skilled in the art will vary from one field to another. It will also vary as the field develops. Thus, although the standard of non-obviousness is the same from one field of technology to another, and within a field as the field develops, what varies during the development of technology, is the benchmark to which obviousness/non-obviousness is to be judged. The benchmark is a constantly evolving benchmark which must reflect the facts for each individual case.