Hindsight and Ex Post Facto Analysis

1The fact that an invention is of a simple character will not by itself make the invention obvious. A simpler invention may be easy to explain and may make it more obvious to a person skilled in the art. (See Haberman v Jackel International Ltd [1999] FSR 683, p 698.) There may be an invention in what is only a simplification. (See Pope Applicance Corpn v Spanish River Pulp and Paper Mills Ltd [1929] AC 269, p 280, (1929) 46 RPC 23 (PC).) It may also lie in recognising that the entire industry was going in the wrong direction. (See Beloit Technologies Inc v Valmet Paper Machinery Inc (No 2) (1995) RPC 705, p 750 (Pat Ct).) But a mere workshop improvement, devoid of ingenuity, will not qualify for a patent. (See Bishwanath Prasad Radhey Shyam v Hindustan Metal Industries (1978).)

2In determining obviousness, the courts should look into the technical advancement made by the invention. The test revolves around whether the advancement made is technically obvious and not whether it is commercially obvious. Justice Aldous observed in Hallen Company v Brabantia (UK) Ltd: ((1989) RPC 307, p 327.)

The word 'obvious' in section 3 is I believe directed to whether or not an advance is technically or practically obvious and not to whether it is commercially obvious. Although the law is encapsulated in section 3 of the Patents Act 1977, the law on obviousness goes back many hundreds of years. The basis of the law is that the public are entitled to manufacture that which has been published, in the sense of made available to the public, with obvious modifications. By 'obvious modifications' are meant that which technically or practically would be obvious to the unimaginative skilled addressee in the art. Such a skilled man should be assured that his actions will not be covered by any monopoly granted to another if he does that which is part of the state of the art with modifications which are workshop modifications or otherwise technically or practically obvious alterations. He does not and should not have to look further and consider whether the step he is taking is obvious or not for commercial reasons. The prize for a good commercial decision or idea is a head start on the competition and not a monopoly for twenty years.

3Once an invention is made, it is possible to postulate a combination of steps by which an inventor might have arrived at the invention that is claimed in the specification if the starting point is known. This is commonly known as 'hindsight reasoning'. (See Wheatley (Davina) v Drillsafe Ltd (2001) RPC 7 (CA).) This is all the more true in the case of pharmaceutical products where the science of reverse engineering is employed with great effect. The court should avoid an ex post facto analysis of the invention, for it is easy for one to say, after the invention is made, that the invention was simple, obvious and did not involve an inventive step. Deprecating the practice, Fletcher Moulton LJ observed in British Westinghouse v Braulik: ((1910) 27 RPC 209.)

I confess that I view with suspicion arguments to the effect that a new combination, bringing with it new and important consequences in the shape of practical machines, is not an invention, because, when it has once been established, it is easy to show how it might be arrived at by starting from something known, and taking a series of apparently easy steps. This ex post facto analysis of invention is unfair to the inventors and, in my opinion, it is not countenanced by English patent law.

4The test of determining obviousness works forward, ie, from closest prior art to the alleged invention and not backward, ie, from the alleged invention to the closest prior art. After an invention is made, it becomes easy to reconstruct the invention from the starting material. It is only because the invention has been made and has proven successful that it is possible to postulate from what starting point and by what particular combination of steps the inventor could have arrived at his invention. Such reconstruction, a posteriori, should not be taken as representing the mental process by which the inventor arrived at his invention. (See Technograph Printed Circuits Ltd v Mills & Rockley (Electronics) Ltd (1972) RPC 346, p 362, per Lord Diplock.) In Farbwerke Hoechst v Unichem Laboratories (1968) (p 69) the Bombay High Court held that the substitution "was not a thing which just any person working in this field would try, but it required extensive research." The Court warned against hindsight analysis observing that "courts of law must guard against the common human failing of being wise after the event in regarding something that has been discovered by research as obvious."

5In Cipla v F Hoffmann-La Roche (2015) (para 150) the Division Bench of the Delhi High Court recorded that "the Bombay High Court in Farbwerke Hoechst v Unichem Laboratories (1968)(supra) guarded the Courts of law against the common human failing of being wise after the event in regarding something that has been discovered by research as obvious", and that "a patent challenger however must demonstrate the selection of a lead compound based on its promising useful properties, not a hindsight driven search for structurally similar compounds."