Inventing Invention: A Case Study of Legal Innovation

new, involve an inventive step and are capable of industrial application.” A footnote defines “‘inventive step’ and ‘capable of industrial application’ ... to be synonymous with the terms ‘non-obvious’ and ‘useful’ respectively.” Id. n.5. In many countries that use the “inventive step” test for patentability, the term “inventive step” is specifically defined to refer to something that is “not obvious to a person of ordinary skill in the art.” See EPC art. 56; UK Patent Act; German Patent Act art. 4, English translation available at http://www.jpo.go.jp/shiryou_e/s_sonota_e/aippi_e/germany/pl/mokuji.htm (similar); Brazilian Patent Act, art. 13, English translation available at http://www.jpo.go.jp/shiryou_e/s_sonota_e/aippi_e/brazil/ipl/mokuji.htm (“An invention shall be considered as involving inventive step if, having regard to the state of the art, it is not evident or obvious to a person skilled in the art.”). The parallel provisions in the Japanese and Korean Patent Acts use language that is typically translated as barring inventions that “could easily have been made.” See Patent Act of 1959, art. 29(2), translation reprinted in Examination Guidelines for Patent and Utility Model chap. 2, at 16 (JPO 2000), available at http://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/Guidelines/PartII-2.pdf; see also Korean Patent Act, art. 29(2), translation available at http://www.kipo.go.kr/kpo/eng/info_doc/data/PatentAct.pdf.