An Overview of Obviousness in Pakistan
Under Pakistani Patent Law, once novelty of a claimed invention has been established, the next step in assessing patent eligibility involves determining the inventive step or nonobviousness of the claimed invention. Because nonobviousness is a legal conclusion based upon certain underlying factual determinations assessed from the standpoint of a person skilled in the relevant art, nonobviousness determinations typically involve a difficult and complex analysis of the invention and the prior art. While determining whether or not a claimed invention has been “made available” to the public prior to the earliest priority date of the application is typically all that is needed to establish novelty or a lack thereof, a determination of obviousness or nonobviousness is not as straightforward.
Depending on the technology or type of invention claimed, Examiners in the Pakistani Patent Office (PPO) generally utilize a mix of the problem-solution approach employed by the European Patent Office (EPO) and the approach relied upon by the English courts as set out by the Court of Appeal in Windsurfing International v. Tabur Marine (Great Britain)  RPC 59 (Windsurfing) when assessing nonobviousness. Specifically, the problem-solution approach involves:
1. Determining the “closest prior art;”
2. Establishing the “objective technical problem” to be solved; and
3. Considering whether or not the claimed invention, starting from the closest prior art and the objective technical problem, would have been obvious to the skilled person.
The inventive step approach set forth in Windsurfing involves:
1. Identifying the claimed inventive concept;
2. Assume the mantle of the normally skilled but unimaginative addressee in the art at the priority date and to impute to him what was, at that date, common general knowledge of the art in question;
3. Identify what, if any, differences exist between the matter cited as being “known or used” and the alleged invention; and
4. Decide, without any knowledge of the alleged invention, whether these differences constitute steps which would have been obvious to the skilled man or whether they require any degree of invention.
To establish a prima facie case of obviousness, an Examiner must establish that there was some (1) teaching, motivation, or suggestion to combine the prior art to arrive at the claimed invention; and (2) that there was a reasonable expectation of success in doing so. For example, combining of two known compositions A and B to form a third composition C having the same purpose as compositions A and B would be sufficient to establish a prima facie case of obviousness. In contrast, if an Examiner is unable to provide a motivation for a skilled person to carry out a modification of the teachings of the prior art to arrive at the claimed invention or a reasonable expectation of success in doing so, then the Examiner has failed to establish a prima facie case of obviousness. Additionally, much like Examiners in other countries, Examiners in the PPO are not permitted to use hindsight or “ex post facto” analysis to combine the teachings of prior art to arrive at the claimed invention.
Tips for Responding to Obviousness Rejections
Focus not only on Differences but on the Invention “as a whole”
When responding to nonobviousness rejections, many Applicants focus solely on the differences between the claimed invention and the cited prior art. While such an assessment is part of a nonobviousness determination, Applicants should not forget that an obviousness inquiry also involves assessing the invention “as a whole”. For example, under the Pakistani Patent Law, when determining patent eligibility, it is improper to consider only the structure of a chemical compound while ignoring its properties. Furthermore, just because the differences between a claimed invention and the prior art may be small, minor or slight, does not necessarily mean that an invention will be considered to be obvious. Likewise, just because the differences between a claimed invention and the prior art are large does not necessarily mean that an invention will be transformed from being “obvious” to “nonobvious.”
Provide Evidence Demonstrating the Unmet Need, Failure of Others, Unexpected or Surprising Results
There are a variety of different ways that an Applicant can establish that a claimed invention is nonobvious over the prior art. For example, an Applicant can argue that the Examiner has not established a prima facie case of obviousness because there is (1) no teaching, motivation, or suggestion to combine the prior art to arrive at the claimed invention; and (2) that there was a reasonable expectation of success in doing so.
Alternatively, an Applicant can provide evidence that the invention solves an unmet need or problem that existed in the art as of the earliest claimed priority date of the application. When making such an argument, an Applicant should provide evidence demonstrating the difficulties or challenges faced by those skilled in the art in trying to solve the unmet need or problem. If the unmet need or problem and the evidence demonstrating the difficulties or challenges faced by those skilled in the art trying to solve the need or problem was not in the application at the time of filing, then such evidence (such as publications, an affidavit, etc.) can be submitted during prosecution.
Additionally, an Applicant can provide evidence (such as publications, a post-filing affidavit, etc.) demonstrating the failure of others to make or practice the claimed invention. Still further, an Applicant can demonstrate that the claimed invention exhibits “superior” or “unexpected” results or properties when compared to the prior art. “Superior” or “unexpected” results generally must be established by providing comparative data over the closest prior art. Such evidence may be included in the application as originally filed or may be submitted in a post-filing affidavit during prosecution. However, for evidence of “superior” or “unexpected” results to be given any weight by the PPO, a relationship between the nature of the evidence and the features or characteristics of the claimed invention that make it nonobvious over the prior art must be established.
As mentioned previously, post-filing affidavits can be used to submit evidence to establish nonobviousness. There is no particular or preferred format for submitting a post-filing affidavit. After describing the skills and expertise of the Affiant, the affidavit may include as many details as necessary to establish nonobviousness. A copy of an affidavit submitted in another country can also be submitted. Notarization or legalization of the affidavit is not required.
This post was written by Naeema Sadaf (Miss) of PakPat World Intellectual Property Protection Services and Lisa Mueller.