Navigating Inventive Step: A Comprehensive Critique of the Pozzoli Case and the Evolution of the Inventive Step Test

The Pozzoli case, officially known as Pozzoli SPA v. BDMO SA, is a seminal decision in European patent law that significantly influenced the assessment of inventive steps. In the realm of patents, the concept of inventive step is crucial, serving as a litmus test for the non-obviousness of an invention. This article critically examines the Pozzoli case, delving into its historical context, the inventive step test it introduced, and the subsequent implications for patent law.

The Pozzoli case emerged from a dispute between Pozzoli SPA and BDMO SA over a patent related to a process for the preparation of certain chemical compounds. The central question before the European Patent Office (EPO) was whether the claimed invention involved an inventive step, a criterion fundamental to the patentability of an invention.

The inventive step, as defined in Article 56 of the European Patent Convention (EPC), requires that an invention must not be obvious to a person skilled in the art. The Pozzoli case played a pivotal role in shaping how inventive step is assessed, introducing a structured approach that has become a cornerstone of European patent law.

The Pozzoli case established a four-step approach for evaluating inventive step, providing a systematic method for patent examiners and courts to determine whether an invention meets the non-obviousness criterion. The four steps are as follows:

            Identify the Inventive Concept: The first step involves identifying the inventive concept of the patent claim. This requires discerning the core contribution that the invention makes over the prior art.

            Identify the Closest Prior Art: Once the inventive concept is identified, the next step is to determine the closest prior art. The closest prior art is the document or combination of documents that is considered to be the most relevant for assessing inventive steps.

            Evaluate the Differences: The third step involves evaluating the differences between the claimed invention and the closest prior art. This analysis focuses on whether the differences would have been obvious to a person skilled in the art.

            Assess the Inventive Step: The final step is an overall assessment of whether the differences between the claimed invention and the closest prior art represent an inventive step. If the differences would not have been obvious, the invention meets the inventive step criterion.

While the Pozzoli case introduced a structured approach to assess inventive steps, it has not been without criticism. One notable critique revolves around the inherent subjectivity in determining the inventive concept and identifying the closest prior art. The interpretation of what constitutes the inventive core and the most relevant prior art can vary, leading to potential inconsistencies in the application of the inventive step test.

Moreover, the rigid four-step approach has been accused of oversimplifying a complex issue. Critics argue that inventive step is a nuanced concept that cannot always fit neatly into a predefined framework. The mechanistic application of the Pozzoli test may overlook the subtleties of certain inventions, especially those in emerging or interdisciplinary fields where the line between common knowledge and innovation is blurred.

Another critique lies in the challenge of predicting the hypothetical actions of a person skilled in the art. Determining whether the differences between the claimed invention and the prior art would have been obvious to an imaginary skilled person introduces an element of speculation, making the assessment of inventive step inherently subjective.

Furthermore, the Pozzoli test has been criticised for placing excessive emphasis on the identification of differences between the claimed invention and the closest prior art. Critics argue that this focus on differences may overshadow the consideration of the overall technical contribution of the invention. In some cases, inventions with substantial technical advancements may still be deemed obvious if the differences are not adequately highlighted.

In the years following the Pozzoli case, the inventive step test has undergone further refinement through subsequent legal decisions and evolving patent law principles. One notable development is the increased recognition of the "problem-solution approach," particularly in the examination of patent applications before the EPO.

The problem-solution approach, also known as the "problem-solution framework," involves the following steps:

            Determine the "objective technical problem" based on the closest prior art and the distinguishing features of the invention.

            Assess whether the proposed solution to the objective technical problem would have been obvious to a person skilled in the art.

This approach provides a more flexible and contextual analysis of inventive step, allowing for a nuanced consideration of the technical contribution of the invention. It addresses some of the criticisms levied against the Pozzoli test by incorporating a more dynamic and problem-oriented perspective.

Additionally, subsequent cases have clarified certain aspects of inventive step evaluation, contributing to a more nuanced understanding of the criterion. The evolution of case law has emphasised the importance of considering the inventive step in light of the technical field, the state of the art, and the specific characteristics of the invention.

The Pozzoli case undeniably left an indelible mark on the landscape of European patent law, introducing a structured approach to the assessment of inventive step that has endured for decades. While the four-step test provided a valuable framework, it has not been immune to critique, with concerns raised about its rigidity and potential for subjectivity.

The evolution of the inventive step test post-Pozzoli, including the adoption of the problem-solution approach, reflects a continuous effort to refine and improve the evaluation of non-obviousness in patent applications. As patent law continues to grapple with technological advancements and complex inventions, the inventive step criterion remains a dynamic and evolving aspect of the patentability assessment.

In conclusion, the critique of the Pozzoli case emphasises the importance of striking a balance between establishing a structured framework for inventive step evaluation and allowing flexibility to adapt to the diverse and rapidly changing landscape of innovation. The ongoing evolution of patent law and inventive step criteria underscores the resilience of the legal system in responding to the challenges posed by emerging technologies and the ever-expanding boundaries of human creativity.