Case Nos: CA-2024-002655/002675/002676 - [2025] EWCA Civ 936

Obviousness: applicable principles

The judge discussed the law at [177]-[226]. There is no dispute as to the accuracy of that account. For the purposes of the appeal it is sufficient to note the following points, most of which are drawn from the judgment of Lord Hodge in Actavis Group PTC EHF v ICOS Corp [2019] UKSC 15, [2019] Bus LR 1318.

As Lord Hodge noted at [60], it is common for English courts to adopt the structured approach to the assessment of obviousness described by Jacob LJ in Pozzoli SPA v BDMO SA [2007] EWCA Civ 588, [2007] FSR 37 at [23] (“the Pozzoli approach”):

(a) Identify the notional ‘person skilled in the art’; (b) Identify the relevant common general knowledge of that person;

Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;

Identify what, if any, differences exist between the matter cited as forming part of the ‘state of the art’ and the inventive concept of the claim or the claim as construed;

Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?”

At [63] Lord Hodge said:

“In Conor Medsystems Inc v Angiotech Pharmaceuticals Inc [2008] 4 All ER 621, para 42, Lord Hoffmann endorsed the fact-specific approach which Kitchin J set out in Generics (UK) Ltd v H Lundbeck [2007] RPC 32, para 72 where he stated:

‘The question of obviousness must be considered on the facts of each case. The court must consider the weight to be attached to any particular factor in the light of all the relevant circumstances. These may include such matters as the motive to find a solution to the problem the patent addresses, the number and extent of the possible avenues of research, the effort involved in pursuing them and the expectation of success.’

Kitchin J’s list of factors is illustrative and not exhaustive. Another factor which needs to be considered in the present case is the routineness of the research. …”

Lord Hodge went on to consider nine factors which are often relevant considerations. Two of these are particularly pertinent for present purposes:

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. If the notional skilled person is faced with only one avenue of research, a “one-way street”, it is more likely that the result of his or her research is obvious than if he or she were faced with a multiplicity of different avenues. But it is necessary to bear in mind the possibility that more than one avenue of research may be obvious. In Brugger v Medic-Aid Ltd (No 2) [1996] RPC 635 , 661, Laddie J stated:

‘if a particular route is an obvious one to take or try, it is not rendered any less obvious from a technical point of view merely because there are a number, and perhaps a large number, of other obvious routes as well.’

I agree. As a result, the need to make value judgements on how to proceed in the course of a research programme is not necessarily a pointer against obviousness.

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. It is not sufficient that a skilled person could undertake a particular trial; one may wish to ask whether in the circumstances he or she would be motivated to do so. The absence of a motive to take the allegedly inventive step makes an argument of obviousness more difficult. …”

Motivation to take a particular step is not a necessary condition for a finding of obviousness, however. In Pharmacia Corp v Merck & Co Inc [2001] EWCA Civ 1610, [2002] RPC 41 Aldous LJ said:

Mr Kitchin realised that this Court was unlikely to reverse the decision of the judge, on what has been called a jury question, unless he could show that the judge had gone wrong in principle. He submitted that he had done just that. First, he submitted that the judge had failed to realise that to find the invention obvious, it was necessary to conclude that there was some obvious reason or purpose to make the compounds of claim 1. In support he referred us to this passage in the judgment of Laddie J. in Hoechst Celanese Corp. v. BP Chemicals Ltd [1997] F.S.R. 547 at page 573:

‘Before a step from the prior art can be held to be obvious there must be some reason why the man skilled in the art would wish to take it. If he has a problem and the step would occur to him as a solution to it, then he has a reason. But there is no requirement that it be demonstrated that the step would have been expected to produce significant commercial advantages. The problem might be very small. The courts will assume that he may just want an alternative way of achieving essentially the same result as in the prior art. Thus mere workshop modifications, none of which would be expected to produce significant technical or commercial benefits are still obvious. To adopt an example sometimes given by Jacob J., if it is known to make a 5-inch plate, it is obvious to make a 5¼-inch plate. Technicians and businessmen frequently want to make trivial variations in established or known products. Similarly if the prior art discloses two wooden parts held together by screws it would be obvious to glue them, even if so doing would not be expected to advance the industry. The notional addressee is likely to want to use materials readily at hand to make essentially the same thing as is disclosed in the prior art. That is sufficient motivation and the use of those materials is, accordingly, obvious. When the defendants argue that Hingorani or any of his readers is entitled to use any “natural extension” or “obvious variant” of his concept, they are correct if by that they mean the type of workshop modification or alternative discussed above. But it was not and could not be suggested by any witness that changing the medium from aqueous to organic and changing the resin was a mere workshop variant of what is set out in Hingorani.’

That statement of the law was, I expect, apt on the facts of that case, but should not be followed generally. A step from the prior art, albeit made without reason, can still be obvious. The judge categorises such a step as workshop modifications and, in so doing, introduces a test not in the statute, namely whether the step from the prior art was a workshop modification. The statutory test is obviousness and any modification which is obvious will not be patentable, whereas one which is not obvious will be. The true test … is to ask whether the invention was obvious. Whether or not there is a reason for taking the step from the prior art may well be an important consideration, but that does not mean that it is an essential requirement of a conclusion of obviousness. In any case, the judge in these proceedings did consider whether there was a reason for taking the step from the prior art and concluded that there was, namely a natural desire to investigate the analog[ue]s and the structural activity relationship of such compounds. ….”