Inventive step under the European Patent Convention
applications and patents
European Patent Convention (EPC), European patents shall be granted for inventions 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 Article 56 EPC. 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.
The Examining Divisions, the Opposition Divisions, 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 claimed 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 Article 54(2) EPC.
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.
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 art, 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 date valid for the claim under examination.
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 641/00) 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 Article 52(2) and (3) EPC, 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.
- T 24/81 , developing the "problem-solution approach", an objective approach to decide whether an invention involves an inventive step.
- T 2/83 , investigates the "could-would" question when determining if the skilled person is prompted to combine two prior art references.
- ^ G. Knesch, Assessing Inventive Step in Examination and Opposition Proceedings in the EPO, epi Information 3/1994, pp 95-101.
- ^ Decision T 1464/05 of the Technical Board of Appeal 3.4.02 of 14 May 2009, Reasons 5.2.1, last paragraph.
- ^ Decision T 1464/05, Reasons 5.2.2, third paragraph.
- ^ Board of Appeal decision T 258/05 of 21 June 2007, Reasons 5.4, referring to "Case Law of the Boards of Appeal of the European Patent Office, 5th Edition 2006, I.D.4.2".
- ^ See for instance Board of Appeal decision T 1621/08 of 17 September 2010, Reasons 2.1.3 to 2.1.4.
- ^ Guidelines for Examination in the EPO c.iv.11.5.2
- ^ Guidelines for Examination in the EPO c.iv.11.6
- ^ Decision T 1095/07 of 20 January 2010, reasons 3.2.
- ^ Special edition OJ EPO 2/2011, EPO Board of Appeal Case Law, p. 16
- ^ Decision T 154/04 of November 15, 2006, Reasons 5 (F), published in the Official Journal of the European Patent Office 2008, 46.
- ^ Decision T 1749/06 of the Technical Board of Appeal 3.4.03 of 24 February 2010, Reasons for the Decision 4.2.2. Discussed in Special edition OJ EPO 2/2011, EPO Board of Appeal Case Law, p. 15: "The board noted the difficulty of assessing whether or not a feature contributed to the technical character of a claim."
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 EPC.
- Guidelines for Examination in the EPO c.iv.11 : Inventive step
- Legal Research Service for the Boards of Appeal, European Patent Office, Case Law of the Boards of Appeal of the EPO (sixth edition 2010), i.d : Inventive step
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