How to attack a patent
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8 July 2012
Attacking a Patent on lack of inventive
If you are sued for patent infringement it will be necessary to attack
the validity of the patent on the grounds that the patent is invalid. A
patent shall be considered to be valid if it is taken to involve an
inventive step if it is not obvious to a person skilled in the art
having regard to any matter which forms part of the state of the art.
The leading cases concerning obviousness was referred to by the Court
of Appeal in Windsurfing International Inc v Tabur Marine
 RPC 59 and Pozzoli v BDMO. The tests as
laid out in Pozzoli is as follows:-
(1) (a) Identify the notional person skilled in the art.
(b) Identify the relevant common general knowledge of that person.
(2) Identify the inventive concept of the claim in question or if that
cannot readily be done, construe it.
(3) 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.
(4) 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
Attacking any patent is a risky and expensive thing to do. It is also
fraught with risk for the patent holder as many patents are revoked
once challenged. You will often find the following in any Judgement " I
find that the patent has been infringed but is invalid"
Michael Coyle is a Solicitor Advocate and can be contacted at
Lawdit Solicitors is a commercial law firm based in Southampton
About the Author
Solicitors offer services and advice for litigation,
commercial contracts, Intellectual Property and IT legal agreements. We
are experts in commercial law with a heavy emphasis on Intellectual
Property, Internet and e-commerce law. Lawdit is a member of the
International Trademark Association, the Solicitors' Association of
Higher Court Advocates and we are the appointed Solicitors to the
largest webdesign association in the world, the United Kingdom Website
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Article Published/Sorted/Amended on Scopulus 2012-08-23 09:07:17 in Legal Articles