In addressing the statutory question of obviousness in Sec. 3 of the 1977 UK Patents Act it is common for English courts to adopt the so-called Windsurfing/Pozzoli structure. An alternative approach which the EPO often adopts is the so-called “problem-and-solution approach”. While both approaches focus on the inventive concept put forward in the claims, neither approach should be applied in a mechanistic way. The question of obviousness must be considered on the facts of each case.Factors which can be relevant in addressing the question of obviousness include the following:First, it is relevant to consider whether at the priority date something was “obvious to try”, in other words whether it was obvious to undertake a specific piece of research which had a reasonable or fair prospect of success. The relevance of the “obvious to try” consideration and its weight when balanced against other relevant considerations depend on the particular facts of the case.Secondly, it follows that the routine nature of the research and any established practice of following such research through to a particular point may be a relevant consideration.Thirdly, the burden and cost of the research programme is relevant.Fourthly, the necessity for and the nature of the value judgments which the skilled team would have in the course of a testing programme are relevant considerations.Fifthly, the existence of alternative or multiple paths of research will often be an indicator that the invention contained in the claim or claims was not obvious.Sixthly, the motive of the skilled person is a relevant consideration. The notional skilled person is not assumed to undertake technical trials for the sake of doing so but rather because he or she has some end in mind. The absence of a motive to take the allegedly inventive step makes an argument of obviousness more difficult.Seventhly, the fact that the results of research which the inventor actually carried out are unexpected or surprising is a relevant consideration as it may point to an inventive step.Eighthly, one must not use hindsight, which includes knowledge of the invention, in addressing the statutory question of obviousness.Ninthly, it is necessary to consider whether a feature of a claimed invention is an added benefit in a context in which the claimed innovation is obvious for another purpose.A tenth consideration is the nature of the invention. The possibility that a dosage patent with such claims may be valid has been recognized both by the EPO and in the United Kingdom courts.In the absence of a legal error by the trial judge the Court of Appeal is justified in differing from a trial judge’s assessment of obviousness if the appellate court were to reach the view that the judge’s conclusion was outside the bounds within which reasonable disagreement is possible.
