Obvious to Try versus Reasonable Expectation of Success

The fact that other persons or teams are also working on the same project does not suggest that it is "obvious to try", or that it is an interesting area to explore. The correct criteria for showing a lack of inventive step is a demonstration that there existed a "reasonable expectation of success". However, a reasonable expectation of success must not be confused with an understandable "hope to succeed". A "hope to succeed" is merely a wish, whereas a "reasonable expectation of success" presupposes a scientific assessment of available facts. Although it may be obvious for a skilled person to perform an experiment, the skilled person would not necessarily have a reasonable expectation of success when embarking on it.

A reasonable expectation of success presupposes that the skilled person before a research project is initiated is capable of predicting - rationally and on the basis of existing knowledge - the successful conclusion of the project within an acceptable time limit. The more unexplored a technical field of research is, the more difficult it is to make predictions about the successful conclusion of the project, and the lower the expectation of success will be.

Even though it is possible to theoretically conceive a straightforward and uncomplicated approach for solving a technical problem, the skilled person may be confronted with unexpected difficulties when trying to put the conceived strategy into practice. Although hoping to succeed, the skilled person embarking on such a project would have expected that the successful conclusion of the project depends not only on technical skill, but also on the ability to take the right decisions along the way whenever a difficult experimental situation requires such a decision to be taken. Under such circumstances the skilled person cannot have a reasonable expectation of success.

Accordingly, one standard for securing an acknowledgement of the inventive step associated with an invention in the field of biotechnology is to demonstrate that a skilled person would not have had any reasonable expectation of achieving the technical results which were in fact achieved by the invention.

As an inventive step must be associated with an invention throughout the entire scope of protection defined by the claims, arguments in favour of an inventive step must be carefully selected in order to avoid that the arguments is only valid for part of the claimed invention.

As it is a common ground for an opposition filed against a patent after issuance that an inventive step is not associated with the invention throughout the entire scope of protection defined by the claims, selecting the wrong arguments in support of an inventive step can result in the patent being revoked for lack of inventive step. It is always recommendable to seek the advice of a professional patent attorney in order to ensure that a valid patent is issued.