The court is not obliged to use this approach as the question is ultimately that set out in section- 3,35 but failure to follow it can lead to hindsight not being properly discounted. Depending upon the facts, various other approaches might assist. The windsurfing/ Pozzoli test, in fact, does little more than provide discipline, reasoning and method to the statutory question as the fourth step more or less restates the statutory test. The windsurfing/Pozzoli test is functionally very similar to the Problem/solution approach adopted by the EPO. The only significant distinction being that in English law all the prior art is considered however remote; whereas under the EPO approach only the single closest prior art is considered.
Nevertheless, in Actavis UK Limited V. Novartis AG.The court of Appeal criticised certain aspects of problem/solution approach and in particular, any suggestion in adopting before English courts. First it suggested that the requirement of selecting the closest prior art is an unnecessary restraint as practitioner are forced by cost and case management select only a small number of closest prior art. Secondly, the ability to reformulate the objective technical problem may lead to problems, however it is attempted. Thirdly, there are the attempts to shoehorn situation into a problem and solution. Whatever one‟s view of these comments, it appears unlikely that the English courts will move away toward adopting the problem and solution approach any time soon. Present position of inventive step in India is currently litigated.
Post Contributed By:
Abhishek Bhargava
Indian Institute Of Legal Studies
