INVENTIVE STEP

Overview
How to assess inventive step
Lack of inventive step

 

OVERVIEW


The requirement of inventiveness or non-obviousness has been developed over time so as to exclude from patentability minor matters that are considered obvious. This requirement revolves around three concepts:

  • The state of the art, which comprises “everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application” (Article 54(2) EPC)
  • Obviousness, i.e. something is “obvious” if it does not involve the exercise of any skill or ability beyond that to be expected of the person skilled in the art
  • The person skilled in the art, i.e. an average expert in the particular technical field of the invention

An invention must be inventive. This means that, after taking into consideration everything made available to the public (state of the art), it must not be obvious to the person skilled in the art.

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HOW TO ASSESS INVENTIVE STEP


The requirement of non-obviousness or inventiveness is a general principle in most patent systems, and national courts have developed their own ways of assessing it.

The EPO itself has developed a method known as the problem/solution approach, which is based on the fundamental consideration that every invention offers a solution to a technical problem. The inventive step therefore corresponds to the step that leads from the problem to the solution.

To learn more about the problem/solution approach, see the e-learning module Inventive step and its evaluation: the problem/solution approach.

The problem/solution approach is:

  • A stage-based procedure
  • Based on the fundamental consideration that every invention offers a solution to a technical problem
  • Designed to assess the obviousness of the steps from the problem to the solution

Each stage of the approach is linked to specific questions:

Stage 1: 
What is the closest prior art? (question 1)
Stage 2: 
What is the difference, in terms of the technical features, between the claim  and the closest prior art? (question 2)
What technical effect is caused by this difference? (question 3)
What, therefore, is the objective technical problem underlying the claimed invention? (question 4)
Stage 3: 
Would the skilled person be able to solve this problem in the manner indicated on the basis of the totality of the prior art, without at any stage employing any inventive skill? (question 5)


Example

Have a look at the following claim:

“An electric toothbrush comprising:

  • a rechargeable battery,
  • means indicating to the user when the battery only has power left for operating the brush for a predetermined time,
  • a flexible arm supporting the brush.”


Let’s assume three documents were found as potential prior art:


The closest prior art:

  • Belongs to the same or a closely related technical field (handheld personal care devices)

  • Has a similar purpose or effect to the invention (cleaning teeth)

  • Requires the minimum of structural and functional modifications

Which document is the closest prior art?


D1
D2
D3
Effects
Electric toothbrush
+
-
-

Rechargeable battery
+
+
-

Low battery indicator
-
+
-
No surprise when the battery is empty. Time to find a power supply.
Flexible arm
-
-
+
Pressure on teeth is reduced

On the basis of this table, D1 clearly constitutes the closest prior art, since it has the most similar technical features with the invention.

What is the difference between the claim and the closest prior art?

At this stage, the objective is to identify the technical features and effects of the claimed invention:

  • Rechargeable battery
  • Means indicating when the battery only has enough power left to operate the brush for a predetermined time
  • Flexible arm supporting the brush

 For the closest prior art the examiner needs to identify:

  • The technical features and effects common to the invention (device for cleaning teeth with a rechargeable battery)
  • The differences between the invention and the closest prior art (battery indicator, flexible arm)
  • Any technical effects that the invention achieves owing to these differences (alerts the user when battery is low, pressure on teeth is reduced)

What technical effect is caused by this difference?

There are two different effects achieved by the two differentiating features with respect to D1. These two different effects solve two unrelated and different technical problems, which means that the skilled person needs to combine the teachings from two documents (in addition to the closest prior art) to arrive at the invention.

What, then, is the objective technical problem of the claimed invention?

Problem 1: How can users keep the toothbrush from stopping working unexpectedly?

Problem 2: How can they avoid damaging their teeth?

Would a skilled person be able to solve this problem in the manner indicated on the basis of the totality of the prior art, without at any stage employing any inventive skill?

Problem 1: The presence of a low battery indicator in the shaver shows the skilled person a solution to the toothbrush’s battery problem. The skilled person would consider the shaver since it is closely related to the toothbrush (handheld rechargeable electric device for personal care).

The skilled person is prompted to adapt the toothbrush of D1 by providing it with a battery with a low battery indicator according to D2.


Problem 2: D3 is equipped with a flexible arm. The skilled person would consider this effect to be combined with D1 in order to overcome problem 2.


Therefore, by combining the teachings of D2 and D3 with those of D1, the skilled person would arrive at an electric toothbrush according to the claim. Consequently, the invention is obvious and would not fulfil the inventive step requirement.


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LACK OF INVENTIVE STEP


As with novelty, the examiner presents their findings and reasoning in the search report and opinion.

The search report cites the relevant documents from the prior art. The search opinion should contain a detailed problem/solution assessment of the independent claims for which the examiner has cited documents as being prejudicial to inventive step in the search report. The examiner must justify why, and where, a person skilled in the art would have found the solution to the objective problem. For dependent claims, the examiner may provide a brief explanation.

Example of an assessment

“2.1 Claim 1 

Claim 1 is not allowable since it lacks inventive step as defined in Art. 56 EPC and is therefore not allowable under Art. 52(1) EPC:

D1 discloses a scattering light smoke detector (see fig. and abstract) in which a heat detector (15) extends from a circuit board, through the labyrinth body (40) which defines the smoke chamber, to arrive above the chamber.

The subject matter of claim 1 of the application differs from that of D1 in that it is claimed that a wall body surrounds the heat sensor lead wire.

The problem to be solved is therefore that of protecting the lead wire of such a thermistor against damage, and increasing ease of assembly. 

The person skilled in the art of light operating smoke detectors would be aware of a further document D2.D2 is in the related field of direct light smoke detectors rather than scattered light detectors. Referring to fig.1, D2 discloses a main smoke chamber, (17), with a heat sensor (57) protruding through the smoke chamber. The assembly 55 forms a thermistor guard (see D2, page 5, lines 27-31). The person skilled in the art would apply the principle of using a thermistor guard element known from D2 to the light scattering smoke detector of D1 without having made an inventive step. In particular there is no technical relationship between whether the smoke detector is of the direct light or of the scattering light type and the arrangement for accommodating a thermistor.

It is concluded that the person skilled in the art would be expected to arrive at the subject matter of claim 1 of the application without having made an inventive step.”



To learn more about formulating claims and how inventive step deficiencies can affect an application and be resolved, see the course Search reports and written opinions.

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