Inventive Step at the European Patent Office

Inventive Step at the EPO

According to the European Patent Convention, European patents shall be granted for any inventions which involve an inventive step. Furthermore, an invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art. It is important to keep in mind that the matter for which protection is sought is defined by the claims. Accordingly, any assessment of inventive step is focused on the claims of the patent specification.

In the process of considering whether an invention fulfils the requirements of patentability, the contemplation of inventive step is only relevant once it has been established that an invention is novel. This however does not change the fact that inventive step is a fundamental consideration in determining whether or not an invention is patentable.

Why is it important to understand inventive step?

During prosecution of a patent application, an applicant is often confronted with an objection from the examiner that their application lacks inventive step. The assessment of whether or not the objection is viable – and therefore whether counter-argumentation could reasonably be presented, or whether the specification needs amendment - is only possible with an understanding of how inventive step is judged.

If a patent proprietor finds their patent subject to an opposition procedure, it is likely that they will be confronted with allegations of a lack of inventive step. For a competitor party interested in challenging the validity of a granted patent through an opposition procedure, one way to do this is to argue that the requirement of inventive step is not met. Whether defending or attacking, an understanding of how inventive step is officially assessed, or, alternatively, whether the invention is obvious to a person skilled in the art, is necessary.

The problem-solution approach

When assessing whether or not inventive step is present, one approach dominates at the European Patent Office: the so-called problem-solution approach. Over a period of 40 years this approach has developed out of case law from the Boards of Appeal at the EPO. Much discussed by commentators, the fact remains that the problem-solution approach is the predominant way of considering whether inventive step is present in a claimed invention. The problem-solution approach aims to offer a means to examine inventiveness which is predictable and without hindsight.

There are three main stages in the problem-solution approach:

i. determining the "closest prior art",

ii. establishing the "objective technical problem" to be solved, and

iii. considering whether or not the claimed invention, starting from the closest prior art and the objective technical problem, would have been obvious to the skilled person.

Each of these three stages can be further broken down. A conclusion that a claimed invention is obvious should emerge only if all the steps in the analysis are carried through correctly. Only if the steps, applied correctly, lead down a logical and understandable path which has as its destination the invention as claimed, should an objection to a lack of inventive step succeed. When inventive step is being discussed, there is a lot of scope for argumentation to be presented.

Determining the closest prior art

The ”closest prior art” (a term subject to much discussion) is the single reference disclosing the combination of features which constitutes the most promising starting point for a development leading to the invention. The closest prior art may take several forms. For example, it may be a single document, or (more likely) it may be a single disclosure within a single document. An oral disclosure, for example from a witness, may also be the closest prior art.

Establishing the objective technical problem

Once the “closest prior art” has been identified, the “objective technical problem” of the above-mentioned stage ii has to be established. This is done by first isolating those technical features of the claim under consideration (typically claim 1) which establish novelty over the closest prior art, i.e. the technical features of the claim which are not disclosed in the citation, sometimes called the distinguishing technical features. Once the novelty defining distinguishing technical features have been identified, the next step is to identify the technical effect that these features provide. If these features were added to the most promising starting point as disclosed in the closest prior art, what technical effect would they produce? By identifying this technical effect, it is then possible to envisage a technical problem which the presence of the features solves. Hindsight in the determination of inventive step is of course to be avoided (at least to the extent that this is possible), and this restriction imposes a requirement of objectivity on the technical problem. The formulation of the objective technical problem has to be such that no reference (or pointer) is made to the claimed solution. It should be apparent from this paragraph – which sketches out nothing more than the bare bones of the process - that the step of establishing the objective technical problem to be solved can be far from straightforward.

Is the solution obvious?

Once the objective technical problem has been established, it is possible to ask whether the invention as claimed solves this problem in a way which would be obvious to the person skilled in the art. If yes, then there is no inventive step. If no, inventive step should be recognised.

In order for a solution to be obvious, it must generally fulfil certain requirements. Firstly, the solution should be part of the prior art (which can also include common general knowledge possessed by the appropriate person skilled in the art). Secondly, there should be a motivation prompting the person skilled in the art to combine the distinguishing technical features as disclosed in the prior art (i.e. the solution) with the closest prior art in such a way as to arrive at the invention as claimed. This requirement for motivation is often referred to as the could-would approach. To deny inventive step, it is not sufficient that the person skilled in the art could combine technical features known from different documents of the prior art. However, if the person skilled in the art would, prompted by a disclosed motivation, make the combination, then inventive step can be denied.

It is apparent from the above that the assessment of inventive step is complicated. Nevertheless, the process of the problem-solution approach to assess inventive step which is generally applied at the EPO is one which can be followed, and which should produce a result which can generally be predicted.

Author: Douglas Purdie. If you have any questions about this article, please do not hesitate to contact us.