Practical Difficulties Overcome

Date Published

There may be situations where the solution is an obvious path to follow, however there were practical difficulties in putting that solution into effect which required inventive ingenuity to overcome. Thus:

"If the evidence establishes that (1) anyone skilled in the relevant art would have recognised that their combination ... would be worth trying[*] and that (2) any problems of design attending their satisfactory combination ... would be easily solved by anyone skilled in the art, then, in my judgement, the combination must be held to have been obvious."

Tetra Molectric Ltd v Japan Imports Ltd [1976] RPC 541 at page 581

Note:  *Following the High Court in Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59; (2002) 212 CLR 411 "worth trying" is no longer a valid test for obviousness - see Special Inducements; Obvious Selections.

In most situations, examiners will be unable to determine whether there were any difficulties implementing the solution, unless the specification discusses them explicitly.

However, at first report examiners should assume that there were no practical difficulties in implementing the solution and raise an inventive step objection if the claimed invention is otherwise obvious. Submissions that there were practical difficulties overcome in implementing the solution are to be assessed on their merit. Examiners are to apply balance of probability considerations when this issue is raised  (see Balance of Probabilities).