Benker v The Comptroller General of Patents

On an appeal concerning inventive step, the court should review the hearing officer’s decision rather than rehear the issue. The structured approach in Pozzoli SpA v BDMO SA is an appropriate framework for identifying the skilled person, common general knowledge, the inventive concept, differences from the prior art and whether those differences were obvious.

Obviousness is generally a matter of degree. Where no question of legal principle arises, an appellate court should be cautious before rejecting the first-instance evaluation. A conclusion within the range of permissible decisions should stand, including where the complaint is alleged hindsight rather than an identifiable error of principle.

The appellant applied for a patent for a measuring container indicating the volumes of alcoholic drinks of different strengths which would contain a given number of units of alcohol. The hearing officer refused the application on the ground that the claimed subject matter lacked an inventive step, applying the structured approach in Pozzoli SpA v BDMO SA. The hearing officer considered three prior-art citations, identified the differences between them and the claim, and concluded that the claimed combination was obvious.

The appellant appealed under section 97 of the Patents Act 1977, alleging errors in the prior-art analysis and impermissible hindsight. The respondent relied on additional grounds, including presentation of information under section 1(2)(d). The central issue was whether the hearing officer’s conclusion disclosed a permissible ground of appellate challenge.

1. Appeal dismissed. The appeal was governed by rule 52.11 of the Civil Procedure Rules and was ordinarily a review of the hearing officer’s decision, not a rehearing of the underlying question.
2. The hearing officer correctly applied the structured approach identified in Pozzoli SpA v BDMO SA. His identification of the skilled person, the relevant common general knowledge and the inventive concept was not challenged successfully. His analysis of the disclosures and differences in the three prior-art citations was even-handed and appropriate.
3. The hearing officer was entitled to consider the prior-art documents in the two alternative ways explained in his decision. He could assess whether a skilled person would connect the information in different citations where it was obvious that the information could be put together in that way. The conclusion that the claimed features did not involve an inventive step disclosed no error of principle.
4. Obviousness was a matter of degree and, on the facts, raised no question of principle. Applying the caution stated by Lord Hoffmann in Biogen Inc v Medeva plc, the court should not undertake a de novo evaluation merely because witness credibility was not in issue. The hearing officer’s conclusion was within the range of permissible decisions.
5. The allegation of hindsight was rejected. There was no sign that the hearing officer had approached the question with impermissible hindsight. The judge stated that he would have reached the same conclusion, but emphasised that this was not the function of the appellate court.
6. It was unnecessary to decide the respondent’s additional grounds, including whether the application concerned the presentation of information as such under section 1(2)(d) of the Patents Act 1977.

• High Court (Patents Court): appeal under section 97 of the Patents Act 1977 against the hearing officer’s decision dated 10 June 2011. The appeal was dismissed.