Determination of Obviousness/Inventive Step by the European Patent Office

Introduction 

Basic Patentability requirements are

  • NOVELTY/NEW – Not previously known by others or previously available in the  public domain
  • USEFUL-  Must have practical utility to accomplish an useful purpose
  • NONOBVIOUSNESS / INVENTIVE STEP-The invention must not be obvious to one of ordinary skill in the art.
The Inventive step and Non-obviousness implies the same meaning in most patent laws. The expression “Inventive step” is used in Europe while “Non-Obviousness” is used in United States.
 
Need for Inventive step 
 
Inventive step is a critical element in patentability. To obtain a patent, the patent system expects something more than merely novel subject matter. The European Patent Convention (EPC) states that, an invention must be new and must involve an inventive step. One of the main reasons is that, it is relatively easy to make something which is merely new, for example by adding minor workshop modification to something that is already known. The requirement of inventiveness or non-obviousness has thus been developed over time so as to exclude from patentability, minor matters that are considered obvious.
 
Evaluating Inventive step 
 
As per Art 56 of EPC "an invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art".
  • State of the art: "everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of the filing of the European patent application"
  • Person skilled in the art: “should be presumed to be a skilled practitioner in the relevant field of technology, who possesses average knowledge and ability, and is aware of what was common general knowledge in the art at the relevant date ".
The boards of Appeal of the European Patent office (EPO) have developed an approach, called the "Problem-Solution approach”. This problem solution approach is applied by the examining division, the opposition divisions and the boards of Appeal of the EPO to decide whether an invention involves inventive step. The EPO considers it essential for reason of legal certainty to devise a legal test which could be applied in all situations and which goes beyond simply asking "is it obvious to a person skilled in the art?” 
 
Problem-Solution Approach 
 
The problem-solution approach essentially consists three steps:
  •        Selecting the closest prior art
  •        Formulating the technical problem
  •        Assessing the obviousness of the claimed solution
Selecting the closest Prior art 
 
When selecting the closest prior art, the first consideration is that, it should be directed to a similar purpose or effect as the invention, or at least belong to the same or a closely related technical field. It is important to remember that, the document, which is most relevant for assessing novelty, is not necessarily the most promising starting point for assessing inventive step. 
 
In general, the closest prior art corresponds to a similar use as the claimed invention and requires the minimum of structural and functional modifications to arrive at it. The closest prior art must be assessed from the point of view of the skilled person on the day before the filing date or priority date of the claimed invention. 
 
Assessing the technical difference 
 
In the second stage of the problem-solution approach starts with the question “what is the difference, in terms of the technical features, between the claim and the closest prior art?" This question arises only when novelty of the invention is satisfied.
The difference between the closest prior art and the claimed invention helps in determining the presence of an invention step. This difference is formulated in terms of features, such as:
  • additional features
  • modified features
  • functional features
Example: The claimed invention is directed to a table having a flat surface supported by four legs, one of them being telescopic, i.e. retractable or extendable thus having an adjustable length. The inventor argues that the claimed invention solves the problem of wobbling tables. The closest prior art is a normal table having four legs of fixed length.In terms of the technical features, the technical difference between the claim on the one hand and the closest prior art on the other is that, one leg of the table is telescopic. 
 
The second question in the second stage is determining the technical effect caused by the difference, which defines the objective technical problem.  
 
The technical effect is the result of the difference achieved by features which distinguish the claimed invention over the closest prior art. The features which contribute to the technical character of the invention should be considered. 
 
One starting point for the assessment of the technical effect can be the analysis of what the applicant states in the description to be the effect of his /her invention. However, one might have a closest prior art different from the starting point of the applicant, the technical effect might be correspondingly different. It may also be that both the claimed invention and the closest prior art achieve the same technical effect, only in different ways.  
 
Considering the same example mentioned above, in which the technical effect caused by this difference is that the table can be placed on an uneven surface without wobbling. 
 
The last question in the second stage is, examining the objective technical problem underlying in the claimed invention. In terms of the problem-solution approach, the "objective technical problem" comprises the reason for and the task of modifying or adapting the closest prior art to provide the technical effects that the invention provides over the closest prior art. The objective technical problem is based on objectively established facts, in particular those appearing in the prior art revealed in the course of the proceedings. 
 
A particular difficulty in assessing inventive step arises when the distinguishing features (the difference) and the corresponding result achieved (technical effect) are already known.
Considering the example, the objective technical problem underlying the claimed invention is how to modify the table known from the closest prior art so that it does not wobble when placed on the uneven surface. In this case, the problem proposed by the applicant is considered to be the objective technical problem. 
 
In the third stage of the problem-solution approach, it is determined whether there is any teaching in the prior art as a whole that not only could, but would have prompted the skilled person, faced with the objective technical problem, to modify or adapt the closest prior art while taking account of that teaching, thereby arriving at something falling within terms of the claims, and thus achieving what the invention achieves. 
 
With reference to the example, the closest prior art is a normal table having four legs of fixed length. The technical difference, in terms of the technical features, between the claim on the one hand and the closest prior art on the other is that, one leg of the table is telescopic. The technical effect caused by this difference is that the table can be placed on an uneven surface without wobbling. The objective technical problem underlying the claimed invention is how to modify the table known from the closest prior art so that it does not wobble when placed on an uneven surface. 
 
A second prior art document discloses a milk stool having three legs as used by milkers in cow sheds or in the field. The document acknowledges that the three-legged construction provide stability to these stools, which are normally used on uneven surfaces. 
 
The invention is not obvious, since the person skilled in the art of furniture would not find in this second document any indication to arrive at the claimed subject-matter when starting from the closest prior art and confronted with the objective technical problem. Although the second document is confronted with the same problem, the combination of the two documents would lead to a table having three legs. These tables would be stable on an uneven surface, thus solving the problem in an alternative way. No hint is given to providing a telescopic leg. It is therefore concluded that the claimed invention is not obvious and is therefore inventive. 
 
Combining pieces of prior art 
 
During the problem-solution approach, a situation occurs where the invention is a solution to a plurality of independent "partial problems”. In such a case, it is necessary to separately assess, for each partial problem, whether the combination of features solving the partial problem is obviously derivable from the prior art. Hence, a different document can be combined with the closest prior art for each partial problem. For the subject-matter of the claim to be inventive, it suffices however that one of these combinations of features involves an inventive step.
In determining whether it would be obvious to combine two or more distinct disclosures, the examiner should also have regard in particular to the following:
  • whether the content of the disclosures (e.g. documents) is such as to make it likely or unlikely that the person skilled in the art, when faced with the problem solved by the invention, would combine them – for example, if two disclosures considered as a whole could not in practice be readily combined because of inherent incompatibility in disclosed features essential to the invention, the combining of these disclosures should not normally be regarded as obvious;
  •  whether the disclosures, e.g. documents, come from similar, neighbouring or remote technical fields;
  • the combining of two or more parts of the same disclosure would be obvious if there is a reasonable basis for the skilled person to associate these parts with one another. It would normally be obvious to combine with a prior-art document a well-known textbook or standard dictionary; this is only a special case of the general proposition that it is obvious to combine the teaching of one or more documents with the common general knowledge in the art. It would, generally speaking, also be obvious to combine two documents one of which contains a clear and unmistakable reference to the other. In determining whether it is permissible to combine a document with an item of prior art made public in some other way, e.g. by use, similar considerations apply.
Combination vs. juxtaposition or aggregation 
 
An invention claimed is considered as a whole. When a claim consists of a "combination of features", it is not correct to argue that the separate features of the combination taken by them are known as obvious and therefore the whole subject-matter claimed is obvious.
However, the invention claimed is merely an aggregation or juxtaposition of features and not a true combination; it is enough to show that the individual features are obvious to prove that the aggregation of features does not involve an inventive step. A set of technical features is regarded as a combination of features if the functional interaction between the features achieves a combined technical effect which is different from, e.g. greater than, the sum of the technical effects of the individual features. 
 
Case study for the claimed invention vs the prior art Document for the lack of Inventive step  
 
According to the art 100(a) and (b) the opposition for the granted patent can be raised on the grounds of the invention claimed in the complete specification does not involve inventive step. This was well established in the case TeliaSonera Finland Oyj vs Giesecke & Devrient Gmbh order on 19 February 2013 case number T 0662/10. The invention is relating to the method for the utilisation of applications stored on a subscriber identity module (SIM) and for the secure treatment of information associated with them, the closest article disclosed is Digital cellular telecommunications systems; Specification of the Subscriber Identity Module – Mobile Equipment interface (ME). 
 
Comparisons were made and with respect to the claims, appellant 1 specifically argued that the claimed system required more than one operating mode to be available for selection by a respective predetermined code. The board however noted that the presence of more than one operating mode is known from prior art and that the selection between them would have been obvious to the skilled person and the reasons were pointed out. 
 
The two reasons pointed out were: 
 
I.            The term "subset mode" had no specific meaning in the art, it is understood by the board in its broadest sense and, hence, includes a communication mode. This understanding was not changed by the statement in the description of the patent in suit that a "subset mode" is used as a synonym for a "security mode" , since a communication mode which uses ciphering keys, as in GSM, may also be understood as a security mode. Further, the board did not see any difference between a "normal" communication mode, as referred to in the claim, and a communication mode. 
 
With this understanding, which is at variance with that of the opposition division, the problem underlying the claimed subject-matter when starting from prior art may be seen in expanding the functions of the known SIM card in order to give the user a choice between several usage modes, at least one of which comprises a restricted right of access. 
 
II.            The problem and its solution were already suggested to the skilled person by the prior art. The file structure shown in prior art includes at the same level as DFGSM the further files DFTELECOM and DFIS-41. Prior art is specifically concerned with the interface between the SIM and the ME for use during the network operation phase of GSM, with the consequence that after SIM activation the ME selects DFGSM . Considering that further network operation possibilities like DFTELECOM and DFIS-41 exist on the SIM card, it would have been obvious to the skilled person that a user should be able to make use of them.
To know the case in detail please click on the link http://www.epo.org/law-practice/case-law-appeals/pdf/t100662eu1.pdf
 
Conclusion 
 
Inventive Step is one of the main reasons for revocation of a patent application filed. Statistics suggest that 43% of the patents have been revoked due to lack of inventive step. So it’s always in the best of interest that a prior art search is done before the priority date and follow the problem-solution approach, and arrive at a point wherein an individual or an applicant can be confident enough to go ahead with the patent application. In addition, when a prior art compared with the invention to be claimed has found to lack inventive step, then the applicant should make sufficient improvement/modification that were left out in the prior art. To conclude with a prior art search is a must before filing a patent application so that one can avoid the cost of legal proceedings.
 
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