Obvious To Try – Waking Up To Reality

"Obvious to try" is a stratagem which can be used to try to knock out a patent on the ground of lack of inventive step, also known as obviousness. The argument goes something like this – the skilled person in possession of the cited piece of prior art would think of using it in a particular way, and would have some expectation of success when doing so. So, if success actually happens then there is no basis for a valid patent.

One difficulty in applying the test is determining the extent of the expectation of success. Recent jurisprudence in the UK has urged caution in applying it; courts have emphasised that it is merely one of many considerations that can be looked at in determining whether there has been an inventive step. In Generics v Lundbeck [2007] RPC 32, Kitchen J stated that the considerations might include "the motive to find a solution to the problem the patent addresses, the number and extent of the possible avenues of research, the effort involved