Inventive step

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The inventive step is a patentability requirement present in most European patent laws, for instance in Germany, in the United Kingdom and under the European Patent Convention (EPC). It corresponds more or less to the non-obviousness requirement of the U.S. patent law.

The assessment of the inventive step varies from one country to another. For instance, the practice of the European Patent Office (EPO) differs from the practice in the United Kingdom.

Pursuant to the Article 52(1) in conjunction with Article 56, first sentence, EPC, European patents shall be granted for inventions which inter alia involve an inventive step, that is, the invention, having regard to the state of the art, must not be obvious to a person skilled in the art.

Problem-solution approach

The Examining Divisions, the Opposition Divisions, and the Boards of Appeal of the EPO almost always apply the "problem-solution approach" in order to decide whether an invention involves an inventive step. The approach consists in:

1. identifying the closest prior art, i.e. the most relevant prior art;
2. 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
3. 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.

This last step 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.

Landmark decisions

• T 24/81 [1], developing the "problem-solution approach", an objective approach to decide whether or not an invention involves an inventive step.
• T 2/83 [2], investigates the "could-would" question when determining if the skilled person is prompted to combine two prior art references.

External links

• Article 52 EPC
• Article 56 EPC
• Guidelines for Examination in the EPO, Part C, Chapter IV Patentability, 9. Inventive step

• Could-would approach
  • Section C-IV, 9.8.3 of the Guidelines for Examination in the European Patent Office, has been written by considering the teaching of the decision of the Technical Board of Appeal of the EPO T2/83.
  • Similar approach followed by the European Patent Office and the United Stated Patent and Trademark Office when dealing with inventive step