Definition of inventive step
To be patentable, an invention must involve an inventive step (A52 (1) EPC).
An invention is considered to involve an inventive step if, for a person skilled in the art, it does not follow clearly from the state of the art inherent in the inventive step (A56 CBE).
State of the art opposable
For the definition of the state of the art, please refer to The definition of the prior art opposable.
Proof of disclosure
Regarding proof of disclosure, please refer to the page Evidence of disclosure.
Assessment of inventive step
Combination of documents
It is quite possible to combine several documents (rarely more than two, Guidelines G-VII 6) if this combination is obvious to those skilled in the art (T2 / 81): ex. one of the two documents makes explicit reference to the other.
Exceptions to this principle may arise in the case of partial problems, for which each problem must be dealt with separately (Guidelines G-VII 6).
It is also possible to combine two embodiments of the same document if nothing distances the skilled person from this combination (ie "teach away", T95 / 90).
The EPO has developed an approach to determine, almost scientifically, whether the invention is inventive.
This approach consists of 5 steps:
- determining the technical field of the invention to allow limiting the state of the art;
- determination of the skilled person;
- determination of the closest state of the art;
- determination of the objective technical problem;
- determination of the evidence of the invention.
Step 1: Technical area and limitation of the state of the art
How to determine if a technical field should be considered for the solution problem approach?
A technical field is considered relevant for the technological field of the invention:
- if this domain represents the even technical field than that of the invention;
- if this technical area represents the general knowledge of the skilled person (T195 / 84);
- if this domain is a subdomain of the invention (ie narrower specific technical field) and if the main known application of the invention is in this subdomain (T955 / 90);
- if this domain is a neighbor domain, that is to say :
- if problems identical or similar to those encountered in the field of the invention arise, and that normally the person skilled in the art should also know (T176 / 84);
- whether the materials used are related or when the general public has been debated about the technical problem in both areas (T560 / 89).
It should be noted that the technical field which has the most characteristics with the invention is not necessarily the one to be retained (although generally it is well suited, G-VII Guidelines 5.1).
Moreover, a prior art cited by the applicant himself is not necessarily relevant to the assessment of the inventive step (T28 / 87).
Moreover, the mere fact that the description refers to a document from a distant technical field does not allow this technical field to be considered as close (T28 / 87).
Step 2: Technical area and skilled person
For example, if the technical problem is "to find an elastic material that does not break easily", the skilled person will be a specialist in the field of materials even if this material is intended for the manufacture of handling belts (T32 / 81).
The skilled person hears (Guidelines G-VII 3):
- a normally qualified practitioner, expert in his field;
- who has the general knowledge in the field concerned;
- and who has an omniscient knowledge of all elements of the state of the art (as previously limited),
- have the means and the ability to carry out routine work and experiments.
As we see, the skilled person is a pure fiction of the mind.
This fiction is all the more marked as it is admitted that the person skilled in the art is not necessarily a man alone: he can thus be a multidisciplinary team (for example, to solve several interrelated problems, T141 / 87 and Guidelines G-VII 3 ).
If this man of the trade is often a person of average formation (ie it is not a Nobel prize, T60 / 89) consulting the prior art in search of a component having the same function (T142 / 84), it can nevertheless be a PhD student if the technical field requires it (eg DNA sequencing, T412 / 93, Guidelines G-VII 3.1).
Step 3: Determining the closest state of the art
Principle: same objective or same effects
To determine this closest state of the art (ie which is the most promising starting point for making an obvious development leading to the invention, G-VII Guidelines 5.1), it is necessary that :
- this disclosure is intended to achieve the same goal or to obtain the same effects that the invention (T482 / 92, T2255 / 10);
- or at least that it belongs to the same technical field as the invention (or to a closely related domain).
If generally this disclosure is one that corresponds to a similar use and that requires the least structural and functional changes to achieve the claimed invention (T606 / 89), this is not a rule (T1666 / 16): it is therefore necessary to give more weight to the problem of origin, the destination of the use and the effects obtained than to the number of common characteristics in the choice of the closest state of the art (T1019 / 13).
Uniqueness of the closest state of the art?
Due to the wording "closest", we may be tempted to conclude that this state of the art is necessarily unique.
This is not the case: there may be several closest prior art (T405 / 14).
The relevant question, when it comes to choosing a starting point, is therefore essentially that of whether or not it allows a realistic objection to be raised.
A document chosen as the closest prior art cannot be excluded simply because another apparently more promising one is available.
Same effects explicitly or intrinsically?
It may happen that a document seeks to solve a problem totally different from the invention (eg antidandruff effect of a shampoo) but that it contains all the features that make it possible to solve the problem of the invention (eg silicone having a known conditioning effect).
In this case, it can very well be chosen as the document of the closest state of the art (T2304 / 16).
Thus, it is not mandatory to explicitly seek the technical effect in the documents of the prior art: the simple fact that the prior art has intrinsically the effect is sufficient.
Identification of the object of the invention
The purpose of the invention must not be determined on the basis of subjective selection, but must take into account what is claimed (T2255 / 10).
Best starting point
It is not excluded, even when a document D1 dealing with the same general technical problem (PG) exists, to consider that another document D2, which deals with a similar problem (PS), constitutes a better choice, or at least one equally plausible choice, provided that it immediately appears to those skilled in the art that what is taught in this document D2 can be adapted to the object of the invention in a simple manner and using only his general knowledge (T1841 / 11).
Nevertheless, in this situation, it is not possible to argue that the person skilled in the art would not have been motivated to solve the general problem PG starting from D2, because the problem-solution approach presupposes that the man of the trade wants to solve PG from the beginning of the inventive process.
Focus on the closest state of the art in another field
It may happen that the preceding analysis leads to selecting a document of a different technical field as the closest prior art.
Under this hypothesis, it should not be forgotten that a state of the art that is not close to the same purpose or effect as the invention can not obviously lead to a person skilled in the art. claimed invention (T473 / 15).
Step 4: Determination of the objective technical problem
The objective technical problem is the problem which arises, for the person skilled in the art, from the application as filed with respect to the objective prior art (T13 / 84).
This problem must therefore be consistent with the request.
How to formulate it?
Once the closest technical document has been identified, one must look at the technical differences (whether structural or functional) between this disclosure and the claims.
These technical differences make it possible to formulate a problem that the skilled person would have to face in order to adapt the state of the art closest to obtaining the technical effects which constitute the contribution of the invention (Guidelines G-VII 5.2): this problem is not necessarily the one presented by the application (it may be less ambitious).
In principle, any effect produced by the invention may be used as a basis for formulating the technical problem, if the effect can be inferred from the application as filed (T386 / 89).
Of course, the objective technical problem is not the initial technical problem posed by the request and may not be explicitly formulated in the application: it is therefore possible to reformulate it (T13 / 84) even at a late stage (eg in appeal, T162 / 86).
The reformulated technical problem can even be based on new effects if the person skilled in the art can see that these effects were implicitly contained in the initial technical problem (T1329 / 04)
On the other hand, we must avoid reasoning a posteriori introducing into the technical problem elements of technical solution (T229 / 85) even though this problem would be posed by the description itself (T686 / 18).
Bonus effect case
Small additional difficulty: the case of the "bonus effect".
We speak of a bonus effect when we obtain an additional technical effect, even surprising, but that we are obliged to obtain it.
For example, if we only have one option (or a given number of options) to make a pill and this option necessarily provides a technical effect of standardizing the pill compounds, this standardization is an effect bonus.
In this case, this bonus effect should not be taken into account in the formulation of the technical problem or in the reasoning of inventive step (T1936 / 13).
The technical problem necessarily technical?
Some examiners may indicate The technical problem you are exposing (eg simplification of an interaction) is not technical and therefore not a real technical problem "(Lived situation) ...
Failing to know what a " Technical problem "(Since nobody dares to give a precise definition), one must analyze the jurisprudence. So is a valid technical problem, a problem allowing:
- to reduce costs (T255 / 00, point 2.1.2 - in reality, I think that the problem should rather be considered as a reduction of a "constraint" by analogy with the decision T102 / 08);
- to increase the quality audio (subjective characteristic) (T255 / 00point 2.1.2);
- of simplify a manufacturing process (T551 / 09point 11);
- to create an interactive human-machine interface and easy to use (T333 / 95point 4.2);
- to present simply and simplify the evaluation of the results of an image search (T634 / 00, points 14 and 15);
- to improve theappearance a glass (T1852 / 09).
Moreover, the fact that the technical problem is motivated by user choices or non-technical preferences has no influence on the fact that the problem is non-technical (T634 / 00point 15).
Partial technical problems
This can happen in the case of simple "juxtaposition of characteristics" (ie there is no synergy between the different characteristics, Guidelines G-VII 7).
Each partial technical problem will be treated separately, and a "problem-solution" approach will be taken on each of the groups of characteristics participating in these partial technical problems (possibly with documents of the closest state of the art) (Guidelines G-VII 6).
It is sufficient for one of these groups of features to involve an inventive step in order for the object of the claim to be inventive (Guidelines G-VII 6).
Proof of technical effect
In certain special cases, examiners or members of the boards of appeal may doubt the technical problem raised (doubting the alleged effect of the characteristic): this is particularly the case in chemistry, biology, cosmetics, cases of drugs, etc. This can also happen in other areas if the claimed technical effect is not credible (T339 / 13).
It is then possible to provide comparative tests (T1127 / 10), provided that they are verifiable and reproducible.
In particular, if " the description of the procedure and the evaluation of the comparative tests [...] are both deficient and insufficiently significant to make it possible to establish credibly the existence of an improvement. These tests may not be admissible (T826 / 11).
It is thus necessary to give an analysis of the statistical distribution of the results, in particular in the case where (T826 / 11):
- experimental results are close and / or
- the panel of testers or the sample is restricted in number.
There is no requirement as to the date of supply of these tests: they may be contained in the application but may also be provided after the filing, during the examination or during an opposition (T2371 / 13).
Step 5: Determination of the evidence of the invention
Once the technical problem has been formulated, it must be asked whether, in order to solve this problem, the modification of the state of the art closest to arriving at the invention would be obvious.
It will be considered that this modification is obvious if the state of the art as a whole contains a teaching which would have encouraged the person skilled in the art to modify the state of the art closest to arrive at the invention (G-VII Guidelines 5.3, T90 / 84).
This incentive or suggestion may, for example, be:
- the second prior art document proposes to solve the same technical problem or a similar problem;
- the second document of the state of the art suggests (even implicitly, T257 / 98) such a modification.
If the document of the closest state of the art advises against a solution (ie "teach away" in English, T95 / 90), it is considered that one skilled in the art will not seek to modify this document in this way. This can also be the case if the solution of the invention goes against the main teaching of the document of the closest state of the art, in view of the aim pursued by this state of the art (T2201 / 10).
Abusive “would” approach?
It may happen that some consider that the distinctive feature of your invention is evident And is a " clear choice for the skilled person »Faced with your problem ...
I admit that in the face of such an argument, it is difficult to defend oneself.
By way of illustration, the EPO indicates that an Examiner may not cite a document if he considers that the feature is notorious (" Notice from the European Patent Office dated 1 October 2007 concerning methods in the field of economic activities », OG 2007, 592).
Fortunately, you can challenge it (T766 / 91): if a person tells you that this characteristic is part of the general knowledge of the person skilled in the art or that the characteristic is obvious, you can ask him to demonstrate it (I confess I have not had much success in front of the rooms d 'Review, but hey ...).
“Could” approach: the problem of finding an alternative
A technical problem that arises may very well be the search for an alternative (" alternative") To a known characteristic (Guidelines G-VII 5.2).
This problem arises if the technical difference with the prior art provides the same effects (or similar effects) as a characteristic of this prior art (eg the technical problem is to find an alternative to the use of a spring - the prior art disclosing rubber making it possible to absorb shocks, such as the spring) (Guidelines G-VII 5.2).
In this situation, it suffices to prove that the person skilled in the art could have modified (and not modified) the state of the art to arrive at the claimed solution (T1419 / 10).
Supplement to incomplete disclosure
The invention represents one of the solutions that would easily and / or naturally come to the mind of those skilled in the art to fill a gap / inaccuracy of a disclosure (G-VII Guidelines 14).
Use of known equivalent
ex. replacement of an electric pump by a fuel pump (G-VIIA Guidelines 1).
Use of a material known for its known properties
ex. use of a detergent for its properties of reducing the surface tension of water (G-VIIA Guidelines 1).
Juxtaposition of characteristics
If the characteristics are known independently, that they function in a normal way without producing an effect which exceeds the sum of the previously known effects, it is probable that this juxtaposition is not inventive (G-VIIA Guidelines 2).
Predictable and biased disadvantage
The mere achievement of a disadvantageous effect does not imply any inventive step (T119 / 82).
Nevertheless, if this disadvantageous effect is in reality only a prejudice (ie a widespread opinion, but inaccurate about a technical fact), the inventive step may be recognized (provided that the existence of prejudice is proved , T60 / 82).
Obtaining an unexpected technical effect may be considered as an index of inventive step (Guidelines G-VII 10.2).
However, if there are no possible alternatives to the differentiating means of the invention, the EPO will consider that it is in a "one-sided situation" in which the use of the means obviously leads to foreseeable benefits and therefore without any inventive step (T192 / 82).
When the invention solves a technical problem to which the specialists have been working for a long time or has been meeting a long-standing need, this can be considered as an index of inventive step (Guidelines G-VII 10.3).
Special case of "mixed" inventions
I invite you to look at the page on mixed inventions.