Is Inventiveness a Matter for Experts?

In a court case, one might think that it will be helpful for an expert witness to give evidence where he or she believes that an invention is inventive (and hence patentable). In fact, our courts disregard such evidence. Why?

Our courts’ view on the role of an expert witness has now been firmly established and was recently reiterated by our Supreme Court of Appeal in Sandvik Intellectual Property AB vs. Outokumpu OYJ and another (Case No. 879/2018).

The reason why our courts disregard conclusions by expert witnesses that an invention is inventive or unobvious is that a court must come to its own conclusion on the issue. However, this does not mean that the evidence of an expert witness cannot be useful to a court.

If there was a publicly available disclosure of something similar to the invention before the patent was applied for, the invention might lack inventiveness, depending on to what extent the invention goes beyond, or differs from, the disclosure. A court will consider expert evidence about what was disclosed and in what respect (if any) the invention goes beyond or differs from what was communicated.

Nevertheless, this does not mean that a court will uncritically accept such evidence. In the case mentioned above, the court was not persuaded by the expert witness’s testimony called by the patentee; therefore, and the patent was revoked for lack of inventiveness.

Deborah Marsicano
Senior Associate | Patent Attorney
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