Inventive step under the European Patent Convention
Encyclopedia
Under the European Patent Convention
(EPC), European patents shall be granted for invention
s which inter alia
involve an inventive step
. The central legal provision explaining what this means, i.e. the central legal provision relating to the inventive step under the EPC, is . It provides that an invention, having regard to the state of the art
, must not be obvious to a person skilled in the art. The Boards of Appeal of the European Patent Office (EPO)
have developed an approach, called the "problem-solution approach", to assess whether an invention involves an inventive step.
s, the Opposition Division
s, and the Boards of Appeal of the EPO predominantly apply the "problem-solution approach" in order to assess and decide whether an invention involves an inventive step. The approach consists in:
The closest prior art need not however be a document. The closest prior art can arise from a public prior use. Indeed, "features rendered available to the public by [a] public prior use ... can be considered as the closest state of the art." The notional person skilled in the art is assumed to be aware of the totality of the prior art pertinent to the relevant area of technology and in particular of everything made available to the public within the meaning of .
"Alleged advantages to which the patent proprietor/applicant merely refers, without offering sufficient evidence to support the comparison with the closest prior art, cannot be taken into consideration in determining the problem underlying the invention and therefore in assessing inventive step". In other words, it must be credible that the problem is effectively solved over the whole claimed range.
If the skilled person would have been prompted to modify the closest prior art in such a way as to arrive at something falling within the terms of the claims, then the invention does not involve an inventive step.
The point is not whether the skilled person could have arrived at the invention by adapting or modifying the closest prior art, but whether he would have done so because the prior art incited him to do so in the hope of solving the objective technical problem or in expectation of some improvement or advantage. This must have been the case for the skilled person before the filing or priority
date valid for the claim under examination.
For instance, two differences may be identified between the claimed subject-matter and a document considered to be the closest prior art, whereas these two differences solve two different objective problems which are independent from each other. The two objective problems may then be treated "as separate partial problems for the purposes of assessing inventive step."
) to assess whether the invention involves an inventive step. In the "Comvik approach", any non-technical feature, i.e. a feature from a field excluded from patentability under , is ignored for the assessment of inventive step, unless the non-technical features do interact with the technical subject-matter to solve a technical problem. Assessing whether or not a feature contributes to the technical character of a claim has been viewed as difficult.
.
European Patent Convention
The Convention on the Grant of European Patents of 5 October 1973, commonly known as the European Patent Convention , is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to which European patents are granted...
(EPC), European patents shall be granted for invention
Invention
An invention is a novel composition, device, or process. An invention may be derived from a pre-existing model or idea, or it could be independently conceived, in which case it may be a radical breakthrough. In addition, there is cultural invention, which is an innovative set of useful social...
s which inter alia
Inter Alia
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involve an inventive step
Inventive step and non-obviousness
The inventive step and non-obviousness reflect a same general patentability requirement present in most patent laws, according to which an invention should be sufficiently inventive — i.e., non-obvious — in order to be patented....
. The central legal provision explaining what this means, i.e. the central legal provision relating to the inventive step under the EPC, is . It provides that an invention, having regard to the state of the art
State of the art
The state of the art is the highest level of development, as of a device, technique, or scientific field, achieved at a particular time. It also refers to the level of development reached at any particular time as a result of the latest methodologies employed.- Origin :The earliest use of the term...
, must not be obvious to a person skilled in the art. The Boards of Appeal of the European Patent Office (EPO)
Appeal procedure before the European Patent Office
Decisions of the first instances of the European Patent Office can be appealed, i.e. challenged, before the Boards of Appeal of the EPO, in a judicial procedure , as opposed to an administrative procedure. These boards act as the final instances in the granting and opposition procedures before the...
have developed an approach, called the "problem-solution approach", to assess whether an invention involves an inventive step.
Problem-solution approach
The Examining DivisionGrant procedure before the European Patent Office
The grant procedure before the European Patent Office is an ex parte, administrative procedure, which includes the filing of a European patent application, the examination of formalities, the establishment of a search report, the publication of the application, its substantive examination, and the...
s, the Opposition Division
Opposition procedure before the European Patent Office
The opposition procedure before the European Patent Office is a post-grant, contentious, inter partes, administrative procedure intended to allow any European patent to be centrally opposed...
s, and the Boards of Appeal of the EPO predominantly apply the "problem-solution approach" in order to assess and decide whether an invention involves an inventive step. The approach consists in:
- identifying the closest prior art, i.e., the most relevant prior art;
- determining the objective technical problem, i.e., determining, in the view of the closest prior art, the technical problem which the claimClaim (patent)Patent claims are the part of a patent or patent application that defines the scope of protection granted by the patent. The claims define, in technical terms, the extent of the protection conferred by a patent, or the protection sought in a patent application...
ed invention addresses and successfully solves; and - examining whether or not the claimed solution to the objective technical problem is obvious for the skilled person in view of the state of the art in general.
Closest prior art
This first step of the problem-solution approach consists in assessing what it is the most promising starting point from which a skilled person could have arrived at the invention. This prior art document is called the closest prior art.The closest prior art need not however be a document. The closest prior art can arise from a public prior use. Indeed, "features rendered available to the public by [a] public prior use ... can be considered as the closest state of the art." The notional person skilled in the art is assumed to be aware of the totality of the prior art pertinent to the relevant area of technology and in particular of everything made available to the public within the meaning of .
Objective technical problem
The second step is to determine the objective technical problem, i.e., determining, in the view of the closest prior art, the technical problem which the claimed invention addresses and successfully solves. This implies determining the feature(s) distinguishing the claimed subject-matter from the closest prior art, determining the technical effect(s) of the distinguishing feature(s), and finally the objective technical problem is how to adapt or modify the closest prior art to obtain the identified technical effect."Alleged advantages to which the patent proprietor/applicant merely refers, without offering sufficient evidence to support the comparison with the closest prior art, cannot be taken into consideration in determining the problem underlying the invention and therefore in assessing inventive step". In other words, it must be credible that the problem is effectively solved over the whole claimed range.
Obviousness
The last step of the problem-solution approach is conducted according to the "could-would approach". Pursuant to this approach, the question to address in order to assess whether the invention involves an inventive step is the following (the question is the climax of the problem-solution approach):- Is there any teaching in the prior artPrior artPrior art , in most systems of patent law, constitutes all information that has been made available to the public in any form before a given date that might be relevant to a patent's claims of originality...
, as a whole, that would, not simply could, have prompted the skilled person, faced with the objective technical problem formulated when considering the technical features not disclosed by the closest prior art, to modify or adapt said closest prior art while taking account of that teaching [the teaching of the prior art, not just the teaching of the closest prior art], thereby arriving at something falling within the terms of the claims, and thus achieving what the invention achieves?
If the skilled person would have been prompted to modify the closest prior art in such a way as to arrive at something falling within the terms of the claims, then the invention does not involve an inventive step.
The point is not whether the skilled person could have arrived at the invention by adapting or modifying the closest prior art, but whether he would have done so because the prior art incited him to do so in the hope of solving the objective technical problem or in expectation of some improvement or advantage. This must have been the case for the skilled person before the filing or priority
Priority right
In patent, industrial design rights and trademark laws, a priority right or right of priority is a time-limited right, triggered by the first filing of an application for a patent, an industrial design or a trademark respectively...
date valid for the claim under examination.
Partial problems
When applying the problem-solution approach, the objective technical problem is sometimes regarded as an aggregation of a plurality of "partial problems". "This is the case where there is no technical effect achieved by all the distinguishing features taken in combination, but rather a plurality of partial problems is independently solved by different sets of distinguishing features." In that case, each set of distinguishing features is assessed independently.For instance, two differences may be identified between the claimed subject-matter and a document considered to be the closest prior art, whereas these two differences solve two different objective problems which are independent from each other. The two objective problems may then be treated "as separate partial problems for the purposes of assessing inventive step."
Inventions consisting in a mixture of technical and non-technical features
An invention may consist in a mixture of technical and non-technical features. In such cases, the EPO generally applies the so-called "Comvik approach" (cf. T 641/00T 641/00
T 641/00, also known as Two identities/COMVIK, is a decision of a Technical Board of Appeal of the European Patent Office , issued on September 26, 2002. It is a landmark decision regarding the patentable subject matter requirement and inventive step under the European Patent Convention...
) to assess whether the invention involves an inventive step. In the "Comvik approach", any non-technical feature, i.e. a feature from a field excluded from patentability under , is ignored for the assessment of inventive step, unless the non-technical features do interact with the technical subject-matter to solve a technical problem. Assessing whether or not a feature contributes to the technical character of a claim has been viewed as difficult.
Landmark decisions
- T 24/81 http://legal.european-patent-office.org/dg3/biblio/t810024ep1.htm, developing the "problem-solution approach", an objective approach to decide whether an invention involves an inventive step.
- T 2/83 http://legal.european-patent-office.org/dg3/biblio/t830002ep1.htm, investigates the "could-would" question when determining if the skilled person is prompted to combine two prior art references.
See also
For a discussion of the inventive step test for "software patents" and "computer-implemented inventions" under the EPO case law, see also "Inventive step test" section in Software patents under the EPCSoftware patents under the European Patent Convention
The patentability of software, computer programs and computer-implemented inventions under the European Patent Convention is the extent to which subject matter in these fields is patentable under the Convention on the Grant of European Patents of October 5, 1973...
.