Tomorrow the UK Court of Appeal will give its ruling in Schlumberger Holdings Ltd v EMGS AS – a ruling expected to provide welcome guidance on how the makeup of the ‘skilled man’/‘skilled team’ should be interpreted in the UK.
What is the ‘skilled man’ test?
In legal terms, any patent is considered addressed to a notional figure called the ‘skilled man’ or ‘skilled addressee’ – an individual (or team) skilled in the subject matter of the invention, but who may not necessarily be capable of ingenuity or making intellectual jumps.
This figure is used, inter alia, to assess whether a patent is obvious over known technology, and whether that patent's teaching can be put into practice. This latter question is dubbed ‘sufficiency’.
How has this case unfolded so far?
EMGS held three patents on the use of controlled-source electromagnetism (CSEM) for oil exploration surveys. The earliest patent claimed a method of detecting hydrocarbon reservoirs under the seabed. This worked by detecting a particular wave type that indicated if resistive layers (such as hydrocarbons) were present. The other two patents claimed improvements on the concept.
Schlumberger sought to revoke the patents on the grounds that they were not new and were obvious. A key issue was the identity of the skilled addressee, and whether the skilled addressee had to be in the same team in order to assess obviousness and insufficiency.
EMGS argued that the invention was not just the technology, but an appreciation that a technique used in another field could be applied to oil exploration. As such, the patents were addressed to a member whose role it was to find oil: an exploration geophysicist – although such an individual would not have extensive CSEM expertise.
Oil companies have not routinely interacted with CSEM specialists. In the 1970s, when CSEM originated, it was used to investigate the Earth's crust, or lithosphere. When the first patent was filed, only two sets of CSEM survey equipment existed and both were with academic institutions.
Schlumberger argued that the skilled addressee was a team comprising a CSEM expert and exploration geophysicist – because if the patents were not directed to a CSEM expert, they could not be put into practice. EMGS countered that the patents could indeed be worked by an exploration geophysicist, and that it was possible to have different skilled addressees for sufficiency and obviousness.
In addressing the sufficiency issue, Justice Mann at the Patents Court found that an exploration geophysicist alone could not work the patents – at least not without undue burden. While not determinative, he said that the time involved on preparatory work indicated that CSEM experience was required.
Justice Mann also found that the skilled addressee was the same for obviousness and sufficiency. After considering the various provisions of the Patents Act 1977, he found no basis for different skilled addressees. Justice Mann therefore favoured Schlumberger's argument and held that the patents were obvious.
Why is the case so important?
When assessing obviousness, the inventive activity or concept may be useful to those in an unrelated field. However, if the Court of Appeal agrees that the skilled addressees can never be different people, a range of other commercially successful ‘realisation’ patents may be at risk of revocation – a point that companies litigating in the UK will undoubtedly be keeping an eye on.
Imagine that an inventor discovers that coating a corkscrew in a particular compound causes the cells of the cork to elongate, thereby reducing its diameter. While the invention lies in the novel application of that compound, the average designer would not know about the compound or its uses.
If the skilled addressees for obviousness and sufficiency were one and the same, a chemist would always be part of the team – and could argue that this particular property of the compound is very well known and, accordingly, obvious.
Evidence v the notional figure
In support of its non-obviousness argument, EMGS provided documentary evidence that CSEM had previously been used only for geological exploration and detailed the oil industry's reaction to the invention when it was made public. However, Justice Mann held that this was not determinative of the appropriate addressee, as the addressee is a notional figure and not identified by seeking out a real-world equivalent.
It will be interesting to see if the Court of Appeal agrees that such evidence is unhelpful, or if it believes that the identity of the skilled addressee should be based on reality. While there is a risk that allowing such evidence could increase the costs of patent litigation, active case management could prevent this – eg by limiting disclosure to particular document categories. Furthermore, evidence of a contemporaneous reaction can guard against hindsight when determining obviousness.
The Court of Appeal is expected to hand down its judgment on 28 July.
Mark is an associate at Hogan Lovells LLP
