Inventive Step At The EPO

Novelty and inventive step are key requirements for patentability across all jurisdictions. For information on novelty see our previous bulletin here. The question of inventive step only arises if an invention is novel. For more information on inventive step generally. This article provides a discussion of how inventive step is assessed at the European Patent Office (EPO).

At the EPO, an invention is considered to involve an inventive step if it would not have been obvious to a person skilled in the art at the relevant date (e.g. the filing date). The skilled person is not a real person, but a fictional creation and as such, the traits of the skilled person differ based on jurisdiction.

The EPO uses their concept of the skilled person in a so-called “problem and solution approach” to assess inventive step. This approach formulates an invention as a solution to a perceived technical problem and constitutes the following steps:

1. Identify the closest prior art

The closest prior art is the closest thing to the invention that is already publicly available. The closest prior art may be a technical paper, an internet article, or an earlier patent application, for example. Once the closest prior art has been identified, this has certain implications for the skilled person’s knowledge. This is because the closest prior art should be directed towards a similar purpose as the claimed invention, or at least belong to the same or a closely related technical field.

2. Determine the differences between the closest prior art and the application

This step identifies the novel features of the invention. For example, the novelty of the invention may arise from a particular arrangement of known components.

3. Establish the technical effect(s) resulting from those differences

The technical effect(s) may relate to advantages that are associated with the novel features of the invention (e.g. faster data processing due to the novel arrangement of components). Alternatively, the technical effect may simply be that the invention provides an alternative way of achieving the same effect as is obtained by the closest prior art. Notably, the effect must be ‘technical’. For example, effects that are subjective to a user, such as the provision of a more relevant music recommendation, are not generally considered to be technical.

4. Formulate the objective technical problem to be solved

This involves formulating a technical problem that is solved by the novel features of the invention. The technical problem is closely associated with the technical effect(s). For example, the technical problem might be how to modify the closest prior art to provide faster data processing, or how to modify the closest prior art to provide an alternative way of achieving the same result. Importantly, the objective technical problem must be formulated so as not to contain pointers to the technical solution. For example, in the above example, it would not be allowable to formulate the problem as ‘how to arrange the particular components so as to provide faster data processing’, since this provides a pointer that it is the arrangement of the components which may lead to faster data processing.

5. Consider whether or not the claimed invention, when starting from the closest prior art and the objective technical problem, would have been obvious to the person skilled in the art

The skilled person possesses no ingenuity whatsoever and can only provide progress in the field by seeing what follows plainly from the prior art when trying to solve the objective technical problem. Anything that follows logically from the prior art is therefore considered “obvious” to the skilled person. Using this approach, an invention involving a carbon fibre apparatus might be considered obvious if the prior art mentions the same apparatus made from aluminium, particularly if the prior art also states that any light-weight material could be substituted for the aluminium. An invention might otherwise be considered obvious if the skilled person could and would combine prior art disclosures to arrive at the invention. For example, if prior art document A discloses X and prior art document B discloses Y, then a combination of features X and Y might be considered obvious if a skilled person could and would combine documents A and B (e.g. because they are in the same technical field and are clearly technically compatible). However, even if two documents could be combined to arrive at the invention, this does not necessarily mean that the invention is obvious to the skilled person. For example, the implementations in the disclosures might be incompatible, or the disclosures might come from remote technical fields (for example, the skilled person reading a disclosure about carpets would be unlikely to look to a disclosure about wigs for a solution). In particular, it needs to be shown that the skilled person would have combined the two different disclosures for the combination to be considered obvious. If the technical effect of an invention is surprising or unexpected, it is less likely that the claimed invention will be considered to be obvious.

Let us imagine a simplified example of the problem and solution approach. Consider a medicine that consists of a painkiller which also includes a tranquiliser. Two pieces of prior art are cited: the painkiller, which provides an analgesic effect; and the tranquiliser, which provides a sedative effect.

1. For the sake of argument, we shall take the painkiller as the closest prior art.
2. The difference between the invention and the closest prior art is that therefore that the invention also includes a tranquiliser.
3. Through testing the claimed medicine, it is found that the technical effect of this difference is that the tranquiliser interacts with the painkiller to produce an enhanced analgesic effect.
4. The objective technical problem may therefore be considered as how to improve the use of the painkiller that is described in the closest prior art.
5. The tranquiliser, as disclosed, was believed to have no intrinsic painkilling effect and it could not have been predicted from the known properties that it might enhance the effect of a painkiller. Therefore, there was no suggestion in the prior art that would have prompted the skilled person to combine the painkiller and the tranquiliser. Thus, even though the skilled person could have combined the two to arrive at the invention, they would not have actually done so. As such, even with the tranquiliser and the painkiller being individually fully disclosed in the prior art, the combination of the two would not have been obvious to the skilled person.

In summary, inventive step is a key requirement for obtaining a patent grant in all jurisdictions. The EPO uses a particular test to assess the existence of an inventive step. This test formulates an invention as a solution to a technical problem. It is then determined whether the solution would have been obvious to a skilled person, starting from this problem and the closest prior art.