Inventive concept or inventive step?

In a recent decision over an on-board system for indicating the loading state a truck, VPG Systems UK v Air-Weigh Europe [2015], HHJ Hacon in the IPEC stepped briefly back from the technical details before him to ruminate on the nature and relevance of the inventive concept in a patent.

When considering patent validity, as one often does in the
course of a patent dispute, the questions of novelty and inventive step are
often the meat of the issue. 

Novelty of the claimed invention is rarely easy to attack:
patent examiners can generally do a pretty good job at reviewing existing
publications and carrying out the necessary element-by-element comparison with
the claimed invention.  If the published
prior art contains a disclosure comprising all of the elements of the
invention, then there is a good chance it will already have been found, and the
claims amended during prosecution to avoid the document.

Inventive step, on the other hand, is a more fluid and
subjective concept and accordingly one on which it is perfectly possible to
disagree even with a skilled and conscientious patent examiner.  The statutory question is whether the
difference between the identified prior art and the claimed invention is one
which would be obvious to a skilled, but wholly unimaginative, person in the
same technical field (the ‘art’).  The
answer therefore depends upon how this hypothetical person is characterised –
his or her education and degree of motivation to solve the problem – and also
upon the piece of prior art under consideration, since English law does not
permit making a mosaic of two or three items of prior art and considering them
as a whole, unless there is a very clear reason why the skilled person would do
so (such as a direction in the text of one document to look at material
contained in the other). 

The English courts have never come up with any hard-and-fast
test as such by which this question of obviousness can be assessed, but there
has been guidance as to how best to approach it.  In the current guidance from the Court of
Appeal, in Pozzoli SpA v BDMO SA [2007],
Jacob LJ added an initial step to the existing three step approach laid down 20
years earlier in Windsurfing
International v Tabur Marine.  Jacob
LJ’s addition was to suggest that the court begin its assessment of the
inventive step by identifying the “inventive concept” of the claim:
disregarding the elements which, though included in the claim, were already
known, what is the clever bit which the patentee is trying to capture?  This exercise, in contrast to the assessment
of inventive step, does not depend on what prior art has been cited against the
patent, it is based purely on interpreting the patent document itself and
precisely what has been claimed. 

The inventive concept once identified will only be limited
by additional elements added into the claims. 
But having identified it will also throw a spotlight on any claim which
does not in fact embody that concept. 
However, useful though it may sometimes be, and promptly though the
patent profession jumped to come into line with Jacob LJ’s formulation when the
Pozzoli decision was first given, HHJ
Hacon concludes that identifying the inventive concept is not a necessary component of the inventive
step analysis. Ultimately, the court must compare the claimed invention against
the prior art, and attempt to estimate the distance and difficulty of the step
a skilled person would have to take in order to bridge it.  Any degree of argument between the parties as
to what the inventive concept should or should not be taken to comprise will
only distract from that fundamental exercise, leaving the inventive concept a
useful shortcut only where all parties essentially agree as to what it is.  Since advocates invited to argue will almost
always find something on which they can disagree, if this decision is followed,
the Pozzoli approach may itself end
up looking like something of a distraction from the past and future analyses
followed by the courts.