Inventive Step

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.

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

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.

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.

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)

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

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

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.