Inventive step

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Chapter 1. Definition of the inventive step

An invention implies an inventive step if, for the person skilled in the art, it does not follow clearly from the state of the art (L611-14 CPI).

Chapter 2. State of the art specific to the inventive step

Section 2.1. Definition

The state of the art to be considered for the assessment of inventive step is the same as that of novelty (public written or oral disclosures, public uses, etc. before the filing date of the patent application), but excluding documents L611-11 CPI, Third paragraph, that is to say the French, European and international patent applications filed before the filing date, and published afterL611-14 CPI).

Section 2.2. Determination of the state of the art opposable

The state of the art opposable is the set of documents accessible to the public before the filing date (or priority date) of the application concerned (L611-11 CPI2nd paragraph).

Chapter 3. Assessment of the inventive step

Section 3.1. Dates to consider

In order to know whether an inventive step exists, it is appropriate to place filing or priority date the demand in question (INPI Examination Guidelines, IC VII-5).

Section 3.2. Combination of documents

Unlike novelty, it is quite possible to combine several documents or several parts of documents (INPI Examination Guidelines, IC VII-5.1), but this is not an obligation (Court of Appeal of Paris, 4th ch., Sect. A, April 2, 2003).

Section 3.3. "Problem-solution" approach

3.3.1. Introduction

If the French approach takes up some elements of the problem-solution approach of the EPO (INPI Examination Guidelines, IC VII-5.3.b), the reasoning of French judges is often more "direct” .

The "problem-solution" approach is detailed below.

3.3.2. Step 1: technical area and limitation of the state of the art

Only the disclosures made in close technical fields of the invention, because the person skilled in the art does not control everything (INPI Examination Guidelines, IC VII-5.2).

The technical fields to be considered are therefore (INPI Examination Guidelines, IC VII-5.2):

Unrepresented anteriority can be used to destroy inventive step through the use of drawings (Court of Appeal of Paris, 4th ch., Sect. B, April 28, 2006).

Moreover, the person skilled in the art can call upon general knowledge of everyday life (eg how are the envelopes made, Paris District Court, June 13, 2014).

3.3.3. Step 2: technical field and determination of the person skilled in the art

This man is a normally qualified practitioner, familiar with what formed the common general knowledge in the art at the filing date (INPI Examination Guidelines, IC VII-5.2).

The person skilled in the art must be defined with regard to technical field of the invention and the technical problem set out in the patent application (Court of Appeal of Paris, Pole 5, 1st ch., May 7, 2014 and INPI Examination Guidelines, IC VII-5.2).

Of course, those skilled in the art know certain aspects of the more general fields (C. Cass. com. May 20, 2014, No. 13-10061).

The person skilled in the art can be a group of individuals with different qualifications, ie a multidisciplinary team (eg a chemist and a pathologist, Court of Appeal of Paris, Pole 5, 2nd chapter, May 16, 2014 and INPI Examination Guidelines, IC VII-5.2).

If this person is often a person of average training, he can be a person with advanced knowledge if the technical field lends itself to it (eg advanced techniques, INPI Examination Guidelines, IC VII-5.2).

3.3.4. Step 3: Determine the closest state of the art

It is in my opinion here that the French judges are the most flexible compared to the strict approach of the EPO.

Indeed, the judges seem to accept any document as a starting point for the analysis, ie as the closest state of the art (as long as this document is in the same technical field as the invention, Paris District Court, 3rd Division, 4th Sect., July 8, 2010).

3.3.5. Step 4: Determination of the objective technical problem

1) Introduction

An invention being the solution of a technical problem, the inventive step which an invention is likely to involve is judged according to the problem that the invention aims to solve, and the way in which it solves it (C. Cass. com., November 4, 1987, No. 85-17469 or INPI Examination Guidelines, IC VII-5.4.b).

2) 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.

Most often the technical problem is stated in the request, explicitly or implicitly (INPI Examination Guidelines, IC VII-5.4.b), but there is no reason why this problem should not be the initial problem formulated by the applicant.

In any case, it is necessary to avoid reasoning a posteriori (Paris District Court, 3rd c. 3rd Sect., September 7, 2012) by introducing, for example, into the technical problem elements of technical solution (INPI Examination Guidelines, IC VII-5.4.a).

3) Partial technical problems

French case law seems to consider that in the case of juxtaposition of characteristics (ie characteristics which do not provide any result other than the sum of the results specific to each characteristic), each characteristic can be anticipated separately (District Court of Strasbourg, 1st c. civ., January 31, 2005).

Therefore, it is possible to have several partial problems.

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).

3.3.6. Step 5: Evidence of the combination of the state of the art documents

An invention does not involve an inventive step if, for a person skilled in the art, it merely follows obviously and logically of the state of the art, without requiring a qualification or a more advanced skill than those one is entitled to expect from a person skilled in the art (INPI Examination Guidelines, IC VII-5.3).

For reasoning of inventive step, it is quite possible to use a single document (Court of Appeal of Paris, 4th ch., Sect. A, April 2, 2003), ie without combination.

If more than one document is used, the fact that the combination of these documents leads to the invention is not sufficient (even if this combination does not exceed the skill of the person skilled in the art, C. Cass. com., April 19, 2005, No. 03-12994), it is necessary that the person skilled in the art be encouraged to combine them either explicitly or in the light of the technical problem that arises (Paris District Court, 3rd c. 3rd Sect., September 7, 2012 or Paris District Court, 3rd c. sect. 02, July 5, 2002).

Nevertheless, if it were obvious to try, the evidence of the solution could be demonstrated (Court of Appeal of Paris, 4th ch., Sect. A, April 2, 2003).

Thus, the fact of solving the technical problem using means used in a similar field to solve a similar problem does not imply an inventive step (INPI Examination Guidelines, IC VII-5.4.b). It will be different if the means are used in a distant technical field (INPI Examination Guidelines, IC VII-5.4.b).

For example, an invention is devoid of inventive step if the skilled person obtains the invention (Court of Appeal of Paris, Pole 5, 1st ch., May 7, 2014):

  • by the simple juxtaposition of the teachings of the prior art (ie without cooperation of the means of the prior art),
  • with the help of his professional knowledge,
  • by simple means of execution.

While some judges have held that a simple juxtaposition of known is not patentable (Court of Appeal of Toulouse, 2nd c., March 22, 1999), this is not enough for the high court because it is not in itself a cause for annulment (C. Cass. com., March 26, 2002, No. 99-15934): for example, mere juxtaposition can overcome a prejudice and thus present an inventive step, but this is not the most common case (INPI Examination Guidelines, IC VII-5.4.c).

There is a combination of means (instead of a simple juxtaposition) if this combination provides a result distinct from that produced by each means taken separately, ie if there is a synergy (District Court of Strasbourg, 1st c. civ., January 31, 2005 and INPI Examination Guidelines, IC VII-5.4.c, Court of Cassation, ch. com. May 30, 2018, RG No. 16/15422).

Section 3.4. Negative indices

3.4.1. Well-known alternative use

If the invention consists of a replacement of a means by a known equivalent having the same technical effects, it is probable that this replacement does not show any inventive step (INPI Examination Guidelines, IC VII-5.4.c).

3.4.2. Use of a material known for its known properties

The same applies if a known material is used exactly for its known properties, e.g. use of a detergent for its properties of reducing the surface tension of water (INPI Examination Guidelines, IC VII-5.4.c).

Section 3.5. Positive indices

3.5.1. Invention of problem

If the technical problem formulated is new and has never been posed in the technical fields of the invention, this constitutes an index of undeniable inventive step (we speak of "invention of problem", INPI Examination Guidelines, IC VII-5.4.b).

The same is true if this problem has been addressed by the prior art, but no solution has been found (INPI Examination Guidelines, IC VII-5.4.b).

3.5.2. Combination of more than two documents

If to anticipate the invention, it is necessary to combine more than two documents, this constitutes an index of inventive activity (INPI Examination Guidelines, IC VII-5.4.c).

3.5.3. Long-standing need

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 (INPI Examination Guidelines, IC VII-5.4.c).

3.5.4. Predictable disadvantage and prejudice

Nevertheless, if the invention overcomes a prejudice of the person skilled in the art or departs in a direction contrary to what is habitually done, the inventive step may be recognized (provided that the existence of prejudice is proved, INPI Examination Guidelines, IC VII-5.4.c).

3.5.5. Unexpected effect

Obtaining an unexpected technical effect may be considered as an index of inventive step (INPI Examination Guidelines, IC VII-5.4.c).

3.5.6. Commercial success

If the commercial success of the product is due to a technical characteristic, this constitutes an index of inventive activity (INPI Examination Guidelines, IC VII-5.4.c).

Section 3.6. Case of new selections

If the invention consists of a selection in a known family (eg a subinterval is selected in a range), it will be necessary to demonstrate that this selection provides a particular effect and that the skilled person would not have been prompted to make this selection (INPI Examination Guidelines, IC VII-5.4.c).

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