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Written by: Olena Yakobchuk, CEO of Intectica Group

We often hear the expression that all ingenious is simple. The most ingenious inventions are the simplest. Can this expression be attributed to an invention from the point of view of patent law?

To obtain a patent, and, therefore, to be protected, an invention must meet three patentability requirements: 1) novelty; 2) inventive step; and 3) industrial applicability. In general, an invention has an inventive step, if for a specialist in some particular field, while analyzing literature, Internet sources, patents, patent applications, etc., the creation of such a technical solution (invention) is not obvious. But, in fact, the interpretation of the inventive step strongly depends on the country of patenting. Therefore, before creating a patenting strategy for an invention, we always clarify the patenting region and focus on local legislation.

One notable example of different interpretation of the inventive step is the case of Emson vs. Hozelock. In essence, an individual inventor developed an expanding garden hose, and obtained patents for invention in Great Britain GB 2490276 and Europe EP 2657585. Moreover, European patent EP 2657585 is also valid in Great Britain. Under a licensing agreement, the individual inventor allowed Emson to commercialize his development, which became quite successful. However, a competing product from Hozelock has emerged in the UK, and now a competitor is trying to challenge and terminate these patents through litigation.

The opposition is based on the lack of the inventive step in these patents because a “similar” development has already been disclosed in US Patent Application No. 2003/0000530, which describes a self-extending oxygen hose for a mask for aeronautical applications. You might ask how aviation equipment relates to garden tools? And the question is quite logical, but not for a patent attorney.

The point is that the European patent examination and the British patent examination use slightly different approaches in determining the inventive step. Specifically, in order to determine whether an invention has the inventive step, the British patent examination analyzes all possible patents, which, in one way or another, relate to the hose in the general sense of this term. Whether it is a garden hose, a hose for pilots’ helmets, a hose for medical or other equipment, etc. But, the European patent examination analyzes patent documents that belong to the “closest prior art”. If a garden hose is claimed, then examination experts will search among the garden hoses; at best, among garden equipment. And, the logic of European patent examination is clear. If an interested inventor wants to determine an appropriate prior art for his invention, for example, to find out more about patents relating to the garden hose, its structure, designs, materials, etc., it is unlikely that he / she will analyze patents relating to the aerospace field, where something similar to the garden hose is highly likely already patented.

And now we return to the main question – are all inventions simple? If the inventor of patents GB 2490276 and EP 2657585 at appropriate time would have carried out a patent search with the help of really qualified patent attorneys, he would have found a description of a self-extending oxygen hose for a mask, and then it might not have been difficult for him to develop his own garden hose. But, given that he did not find it, could his invention be called “simple” and obvious?

Actually, the conclusion from this litigation case is very simple: in order to patent your development, it is better to contact professional patent attorneys who know the intricacies of conducting national examinations. It is extremely important to conduct a patent search. In the described case, a patent strategist could have built a protection scheme taking into account the hose for the aerospace field. Consequently, the inventor would have filed an application claiming an old technology for a new field of use, and the competitors would have had no chance. Regardless of the specifics of local laws. And, this is especially important if you are not going to limit the protection of your development to one country and you need to adapt to the requirements of others.

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