Inventive Step

Definition of Inventive Step

An invention involves an inventive step if, for a person skilled in the art, it is not obvious in view of the prior art (L611-14 CPI).

Prior Art Relevant to Inventive Step

Definition

The prior art to be considered for assessing inventive step is the same as that for novelty (public disclosures in writing or orally, public use, etc. before the filing date of the patent application), but excluding documents under L611-11 CPI, third paragraph, i.e., French, European, and international patent applications filed before the filing date and published thereafter (L611-14 CPI).

Determination of the Relevant Prior Art

The relevant prior art consists of all documents available to the public before the filing date (or priority date) of the application in question (L611-11 CPI, second paragraph).

Assessment of Inventive Step

Relevant Dates

To determine whether an inventive step exists, the assessment must be made as of the filing or priority date of the application in question (INPI Examination Guidelines, I-C VII-5).

Combination of Documents

Unlike for novelty, it is entirely possible to combine several documents or parts of documents (INPI Examination Guidelines, I-C VII-5.1), though this is not mandatory (Paris Court of Appeal, 4th Chamber, Section A, April 2, 2003).

Problem-Solution Approach

Introduction

While the French approach incorporates certain elements of the EPO’s problem-solution approach (INPI Examination Guidelines, I-C VII-5.3.b), French judges often employ a more direct reasoning.

The problem-solution approach is detailed below.

Step 1: Technical Field and Limitation of Prior Art

Only disclosures made in closely related technical fields to the invention should be considered, as a person skilled in the art does not have universal knowledge (INPI Examination Guidelines, I-C VII-5.2).

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

• the technical field of the invention, which the person skilled in the art fully masters;
• neighboring fields (Paris Court of Appeal, Division 5, Chamber 2, April 1, 2011) that the person skilled in the art understands;
• potentially remote fields that the person skilled in the art is aware of.

Non-translated prior art may be used to challenge inventive step based on drawings (Paris Court of Appeal, 4th Chamber, Section B, April 28, 2006).

Furthermore, the person skilled in the art may rely on general knowledge from everyday life (e.g., how envelopes are made, Paris High Court, June 13, 2014).

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

This person is a practitioner of ordinary skill, aware of what constituted the common general knowledge in the art at the filing date (INPI Examination Guidelines, I-C VII-5.2).

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

Naturally, the person skilled in the art is familiar with certain aspects of broader fields (French Supreme Court, Commercial Chamber, 20 May 2014, No. 13-10061).

The person skilled in the art may be a group of individuals with different qualifications, i.e., a multidisciplinary team (e.g., a chemist and a pathologist, Paris Court of Appeal, Division 5, 2nd Chamber, 16 May 2014 and INPI Examination Guidelines, I-C VII-5.2).

While this person skilled in the art is often a person of average training, they may be a person with specialized knowledge if the technical field so requires (e.g., cutting-edge technologies, INPI Examination Guidelines, I-C VII-5.2).

Step 3: determination of the closest prior art

In my view, it is here that the French courts show the greatest flexibility compared to the EPO’s strict approach.

Indeed, the courts appear to accept any document as a starting point for the analysis, i.e., as the closest prior art (provided that this document is in the same technical field as the invention, Paris Court of First Instance, 3rd Chamber, 4th Section, 8 July 2010).

Step 4: determination of the objective technical problem

Introduction

Since an invention is the solution to a technical problem, the inventive step that an invention may involve is assessed in relation to the problem the invention aims to solve and the way in which it solves it (French Supreme Court, Commercial Chamber, 4 November 1987, No. 85-17469 or INPI Examination Guidelines, I-C VII-5.4.b).

How to formulate it?

Once the closest prior art document has been identified, the technical differences (whether structural or functional) between this disclosure and the claims must be examined.

Most often, the technical problem is set out in the application, either explicitly or implicitly (INPI Examination Guidelines, I-C VII-5.4.b), but there is nothing to prevent this problem from differing from the initial problem formulated by the applicant.

In any event, ex post facto reasoning must be avoided (Paris Court of First Instance, 3rd Chamber, 3rd Section, 7 September 2012), for example, by introducing elements of the technical solution into the technical problem (INPI Examination Guidelines, I-C VII-5.4.a).

Partial technical problems

French case law appears to consider that in the case of a juxtaposition of features (i.e., features that do not produce any result other than the sum of the results specific to each feature), each feature may be anticipated separately (Strasbourg Court of First Instance, 1st Civil Chamber, 31 January 2005).

Consequently, it is possible to have several partial problems.

Each partial technical problem will be addressed separately, and a

Step 5: Obviousness of the combination of prior art documents

An invention does not involve an inventive step if, for a person skilled in the art, it merely follows obviously and logically from the prior art, without requiring any qualification or skill beyond what may reasonably be expected of a person skilled in the art (INPI Examination Guidelines, I-C VII-5.3).

For an inventive step assessment, it is entirely possible to rely on a single document (Paris Court of Appeal, 4th ch., sect. A, April 2, 2003), i.e., without any 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 such combination does not exceed the competence of the person skilled in the art, French Supreme Court, Commercial Chamber, April 19, 2005, No. 03-12994); it must also be shown that the person skilled in the art would have been prompted to combine them, either explicitly or in view of the technical problem at hand (Paris High Court, 3rd ch. 3rd sect., September 7, 2012 or Paris High Court, 3rd ch. sect. 02, July 5, 2002).

Nevertheless, if it was obvious to try, the obviousness of the solution may be demonstrated (Paris Court of Appeal, 4th ch., sect. A, April 2, 2003).

Thus, solving the technical problem using means employed in a related field to address a similar problem does not involve an inventive step (INPI Examination Guidelines, I-C VII-5.4.b). The outcome may differ if the means are used in a remote technical field (INPI Examination Guidelines, I-C VII-5.4.b).

For example, an invention lacks an inventive step if the person skilled in the art arrives at the invention (Paris Court of Appeal, Division 5, 1st ch., May 7, 2014):

• by the mere juxtaposition of the teachings of the prior art (i.e., without cooperation between the prior art means),
• using their common general knowledge,
• by simple implementation means.

While some courts have held that a mere juxtaposition of known means is not patentable (Toulouse Court of Appeal, 2nd ch., March 22, 1999), this is not sufficient for the Supreme Court, as it is not in itself a ground for invalidation (French Supreme Court, Commercial Chamber, March 26, 2002, No. 99-15934). For instance, a mere juxtaposition may overcome a prejudice and thus involve an inventive step, though this is not the most common scenario (INPI Examination Guidelines, I-C VII-5.4.c).

A combination of means (as opposed to a mere juxtaposition) exists if this combination yields a result distinct from that produced by each means taken separately, i.e., if there is a synergistic effect (Strasbourg High Court, 1st civ. ch., January 31, 2005 and INPI Examination Guidelines, I-C VII-5.4.c, French Supreme Court, Commercial Chamber, May 30, 2018, Case No. 16/15422).

Negative indicators

Use of well-known alternatives

If the invention consists of replacing a means with a known equivalent having the same technical effects, it is likely that such replacement does not demonstrate an inventive step (INPI Examination Guidelines, I-C VII-5.4.c).

Use of a known material for its known properties

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

Positive indicators

Problem invention

If the technical problem formulated is new and has never been posed in the technical fields of the invention, this constitutes an undeniable indication of inventive step (referred to as a « problem invention », INPI Examination Guidelines, I-C VII-5.4.b).

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

Combination of more than two documents

If, in order to anticipate the invention, it is necessary to combine more than two documents, this constitutes an indication of inventive step (INPI Examination Guidelines, I-C VII-5.4.c).

Long-standing need

When the invention solves a technical problem for which specialists have long been seeking a solution or meets a long-standing need, this may be considered as an indication of inventive step (INPI Examination Guidelines, I-C VII-5.4.c).

Predictable disadvantage and prejudice

Nevertheless, if the invention overcomes a prejudice of the person skilled in the art or proceeds in a direction opposite to what is usually done, inventive step may be acknowledged (provided that the existence of the prejudice is proven, INPI Examination Guidelines, I-C VII-5.4.c).

Unexpected effect

The achievement of an unexpected technical effect may be considered as an indication of inventive step (INPI Examination Guidelines, I-C VII-5.4.c).

Commercial success

If the commercial success of the product is due to a technical feature, this constitutes an indication of inventive step (INPI Examination Guidelines, I-C VII-5.4.c).

Case of new selections

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