Inventive Step

Inventive step is the European equivalent of the non-obviousness requirement: LEGAL BASIS: European Patent Convention (EPC) Article 56: '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'; PERSON SKILLED IN THE ART (PSA): a hypothetical skilled technician who: has access to all prior art available before the filing date; has ordinary knowledge and skills in the relevant technical field; can apply routine methods without inventive ability; exercises common general knowledge; is not creative or inventive; TECHNICAL CHARACTER REQUIREMENT: the EPC adds a requirement not present in US law: the claimed subject matter must solve a TECHNICAL PROBLEM to be patentable; business methods, mathematical methods, mental acts are excluded from patentability to the extent they do not go beyond the technical state of the art; this 'technical character' requirement is much stricter in Europe than in the US; UNLIKE US LAW: the EPO does not use a four-factor test like Graham v. John Deere; the EPO uses the structured 'problem-solution approach'; hindsight is more systematically avoided than under US law; secondary considerations (commercial success, long-felt need) are less frequently decisive at the EPO than in US practice; CLAIM TYPES: the inventive step analysis is conducted for each claim separately; a method claim may have inventive step while the apparatus claim for the same device lacks inventive step; INVENTIVE STEP vs. NOVELTY: novelty (EPC Article 54): absolute — a single prior art disclosure that discloses every feature defeats novelty; inventive step (Article 56): relative — may combine multiple documents; novelty must be established before inventive step is assessed.

The problem-solution approach is the EPO's structured methodology for inventive step: STEP 1 — IDENTIFY THE CLOSEST PRIOR ART: the 'closest prior art' is the single prior art document that represents the most promising starting point for arriving at the claimed invention; criteria: closest to the claimed invention in terms of: structure/form of the claimed invention; nature of the problem addressed; purpose/intended use; if multiple prior art documents could be 'closest,' the applicant may argue each one in turn; STEP 2 — DETERMINE THE OBJECTIVE TECHNICAL PROBLEM: compare the claimed invention with the closest prior art; identify the technical features of the claim that are different from the closest prior art (the 'distinguishing features'); the objective technical problem is the problem that the distinguishing features solve as an objective matter; CRITICAL RULE: the objective technical problem must be stated as a TECHNICAL problem, not a commercial or business problem; 'reducing cost' is not a technical problem; 'improving efficiency of algorithm X' is a technical problem; REFORMULATION: if the applicant stated one problem in the description but the actual technical effect of the distinguishing features solves a different problem, the EPO will reformulate the objective technical problem; STEP 3 — COULD WOULD QUESTION: ask whether a skilled person, starting from the closest prior art and trying to solve the objective technical problem, would have arrived at the claimed subject matter; COULD: does the prior art provide a technical teaching pointing towards the distinguishing features?; WOULD: would the skilled person have actually made the combination, with a reasonable expectation of success?; 'could' is not enough — must show 'would'; SECONDARY EVIDENCE: unexpected technical results; synergistic effects; long-felt need; can reinforce the conclusion that the skilled person would not have arrived at the solution.

The European and US approaches to inventive step/non-obviousness have important similarities and differences: US NON-OBVIOUSNESS — GRAHAM v. JOHN DEERE (S.Ct. 1966): four-factor test: (1) scope and content of the prior art; (2) differences between the prior art and the claimed invention; (3) level of ordinary skill in the art; (4) secondary considerations (commercial success; long-felt need; failure of others; copying by others); KSR INTERNATIONAL v. TELEFLEX (S.Ct. 2007): the TSM test (teaching-suggestion-motivation) is not rigid; 'obvious to try' can establish obviousness when there is a finite number of identified, predictable solutions; combinations of obvious-to-combine references can render a claim obvious; EPO PROBLEM-SOLUTION vs. GRAHAM/KSR: STRUCTURAL DIFFERENCE: problem-solution approach is more formulaic (closest prior art → objective technical problem → would/could question); US Graham/KSR is more flexible and holistic; CLOSEST PRIOR ART: EPO requires selection of a SINGLE closest prior art starting point; US does not have this strict starting-point requirement; HINDSIGHT: problem-solution approach systematically avoids hindsight by requiring the objective technical problem to be determined BASED ON the distinguishing features (not starting from the claim and working backwards); US courts instruct against hindsight but the methodology is less structured; SECONDARY CONSIDERATIONS: both US and EPO give weight to objective evidence of non-obviousness; but EPO secondary considerations tend to be less decisive; in the US, strong secondary consideration evidence (commercial success + nexus) regularly overcomes prima facie obviousness; TECHNICAL EFFECT REQUIREMENT: the EPO requires that the invention achieve a technical effect over the prior art; the US does not have an equivalent 'technical effect' requirement; DOUBLE PATENTING: EPO has a form of double patenting prohibition for divisional applications; US has obvious-type double patenting (ODP) requiring terminal disclaimer.

Major Asian patent offices have their own inventive step standards that practitioners must understand: JAPAN — INVENTIVE STEP (PROGRESSIVE CREATION): Japan Patent Act Article 29(2): a person ordinarily skilled in the art could have easily made the invention is NOT patentable; JPO EXAMINATION GUIDELINES: the JPO uses a reasoning approach similar to EPO problem-solution; steps: (1) identify the technical problem addressed by the invention; (2) identify prior art; (3) identify differences between claim and prior art; (4) assess whether a skilled person would have been motivated to make the differences; MOTIVATION FACTORS: technical teaching pointing toward the solution; design choice based on known techniques; routine modification; JAPAN vs. US/EPO: Japan is generally considered as strict as EPO; commercial success and secondary considerations are less decisive; JPO has been criticized for being more patent-friendly in certain high-tech fields; CHINA — INVENTIVE STEP: China Patent Law Article 22(3): inventive step means that the claimed invention has outstanding substantive features and notable progress compared to the prior art; SIPO (now CNIPA) EXAMINATION GUIDELINES: CNIPA also uses a problem-solution type approach (closest prior art, technical effect, would the skilled person have been motivated); OUTSTANDING SUBSTANTIVE FEATURES: not obvious to a skilled person; NOTABLE PROGRESS: produces beneficial technical effects; ADDITIONAL REQUIREMENT: China's 'notable progress' requirement is broadly similar to the 'technical effect' requirement at the EPO; CHINA vs. EPO: historically China has been seen as somewhat stricter on inventive step for some technology types; China has been improving examination quality and harmonizing with international standards; INDIA: India uses the inventive step standard under Section 2(1)(ja) of the Patents Act (as amended): 'a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art'.

EPO inventive step rejections require different strategies than US obviousness rejections: CHALLENGE THE CLOSEST PRIOR ART SELECTION: argue that the examiner chose an inappropriate 'closest prior art'; propose an alternative closest prior art that results in a less challenging objective technical problem; the EPO must use a starting point that a skilled person would actually have considered for the claimed purpose; REFORMULATE THE OBJECTIVE TECHNICAL PROBLEM: challenge the examiner's formulation of the objective technical problem; argue for a more specific or different technical problem; 'the problem is not X but Y, and the prior art does not address Y'; UNEXPECTED TECHNICAL EFFECTS: demonstrate that the claimed invention achieves a technical effect that was unexpected in light of the prior art; the unexpected effect must be over the closest prior art (not just ANY prior art); submit experimental data comparing the invention's performance against the closest prior art; SYNERGISTIC EFFECTS: if the claim is to a combination, demonstrate that the combination achieves a synergistic effect not expected from the individual components; CHALLENGE THE 'WOULD' QUESTION: distinguish between what a skilled person 'could' have done (theoretically possible) and what they 'would' have done (actually motivated to do); argue that the prior art taught AWAY from the claimed solution; argue that combining the prior art references would have required modification of one reference that would destroy its purpose; LIMITATION OF CLAIM SCOPE: amend claims to focus on the aspects that provide the surprising technical effect; add claims directed to the specific technical feature that creates the inventive step; AUXILIARY REQUESTS: file multiple sets of claims (main request + auxiliary requests) at different scope levels; the EPO examiner should allow the narrowest set that passes the inventive step threshold.