Patentability

What Is Inventive Step?

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15 June, 2021

Inventive step is a test that ensures that the novel feature of an invention is not trivial and adds a useful technical effect. This could be thought of as ensuring that the invention is ‘clever’ and adds something to the field of technology. The patent system encourages innovation by granting a monopoly to parties that disclose their inventions to the public. The inventive step requirement ensures that there is large enough improvement between the disclosed invention and existing technology to warrant the granting of the monopoly (i.e. that a trivial change has not just been made).

Compared to novelty, inventive step is far less objective. Inventive step is generally assessed by asking: “given the known prior art, would the claimed invention be obvious to a person skilled in the art?” The person skilled in the art (also known as the skilled person) is a fictional character in the relevant field of technology, who is good at their job but has no inventive capacity. Therefore, assessing inventive step becomes a question of what is obvious to a competent worker in the given field who isn’t very creative or experimental.

Different jurisdictions have different tests to determine what is obvious to the skilled person. These tests take the reader through a series of steps to help them reach a conclusion and exist to ensure inventive step assessment is as objective as possible.  The European Patent Office has the problem and solution approach, which assumes that every invention is a solution to a problem. This assessment is very evidence based, and prior art documents are usually combined by Examiners to dispute the inventive step of applications. The UK Intellectual Property Office uses the Pozzoli approach, which identifies the skilled person or team and what they would actually know in order to deduce what would be obvious to them. Whilst this approach could be viewed as more realistic, it is also viewed as more subjective and therefore more difficult to follow.

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