Mr Justice Arnold, now the senior judge in the English Patent Court, recently reemphasised the importance of correctly instructing experts on inventive step in the UK. In HTC v Nokia (see article here), Arnold J was somewhat critical of the manner in which HTC had instructed its expert when considering inventive step, indicating that this had been calculated to induce hindsight.
It seems that HTC’s expert was initially provided with both the patent in suit and some of the prior art. He then produced a critique of the patent, accentuating the negative over the positive.He subsequently considered the prior art but was also instructed to limit his consideration to parts of it, only reviewing the whole of one item of prior art shortly before trial.
The danger with this approach is that the expert necessarily will read the prior art in the light of the patent in suit.This risks the expert’s on inventive step being damaged by hindsight because his review of the prior art will be influenced by reading the patent.
The better approach is to ask the expert, as their first step, to consider the prior and to give an opinion as to what, in the light of the prior art and the common general knowledge, what may be obvious from that. Only then should the expert be given the patent to look at.
In the past, Arnold J has commended parties for getting the approach right and his latest comment should serve as a reminder as to how to approach inventive step before the English courts.Those who get this wrong risk serious damage to what might otherwise be a good inventi`ve step challenge.