Industry news and case law

The UK inventive step test - Have you picked the right team?

5th November, 2010

A recent decision of the UK Court of Appeal (Schlumberger Holdings Ltd v Electromagnetic Geoservices AS (“EG”)) provides useful guidance on the make-up of the notional “team skilled in the art”.  Importantly, the composition of the team may be different when looking at different aspects of a patent.  The key message is that for “art-changing” inventions, while a team may require a member having particular expertise to implement the invention, that same person would not necessarily have been on the team devising the invention.

The case concerned European Patent (UK) 1256019, in the name of EG, which relates to the use of Controlled Source Electromagnetic (CSEM) surveying to determine the nature of subterranean reservoirs.  Prior to the patent, seismic methods had been the primary way in which hydrocarbons where detected in such reservoirs. The use of CSEM surveying had never been proposed for this sort of application and represented a new development in the field of subterranean surveying. 

Schlumberger argued that the patented invention was obvious. Their arguments largely rested on the composition of the notional “skilled team” used to make the invention.  In particular, Schlumberger argued that the “skilled team” must comprise individuals with the expertise required to implement the invention. As this team must include a CSEM surveying expert, the question of obviousness must be considered with the knowledge of a CSEM surveying expert in mind.  With this knowledge in mind, they argued, the invention was obvious.

Schlumberger’s arguments were based on the fact that the phrase “person skilled in the art” is used in the European Patent Convention (EPC) in the context of sufficiency of description and inventive step.  They argued it must be given the same meaning in both contexts as the same terminology is used in both contexts. Accordingly, if a “skilled team” requires a particular expert to implement the invention, the knowledge of that expert must be considered when determining obviousness.

The Court of Appeal confirmed that in most cases Schlumberger’s interpretation would be correct; the skilled team would be the same. However, where an invention was “art-changing”, the skilled team may well be different. If the notional skilled team was the same for both purposes, such inventions would be, prima facie, obvious.  Jacob LJ noted that, where an invention is “art-changing”, the skilled team post-grant (i.e. the team implementing the invention) would be different to the skilled team pre-filing (i.e. the team trying to solve the problem in hand).  In the present case, a key question was whether or not a geophysicist would have considered CSEM as an answer to the problem, and whether a CSEM expert would have been aware of the problem. On the evidence, the answer to both questions was “no”. The Court held that the “skilled team” would not have included a CSEM expert. Therefore, the conclusion was that it was not obvious to use CSEM to detect hydrocarbons.

This decision clarifies that the application of a known technology to a new field may well be inventive.  This is particularly the case when an invention is “art-changing” in the sense that it results in an entirely new approach to a particular problem. The fact that a particular expert may be required to implement a particular invention, does not mean that that same expert would notionally have been available to the team making the invention.

Andrew Thompson
Electronics, Computing & Physics Group

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