Inventive step and non-obviousness

The inventive step and non-obviousness reflect a same general patentability requirement present in most patent laws, according to which an invention should be sufficiently inventive — i.e., non-obvious — in order to be patented.

The expression "inventive step" is predominantly used for instance in Germany, in the United Kingdom and under the European Patent Convention (EPC), while the expression "non-obviousness" is predominantly used in United States patent law. Although the basic principle is roughly the same, the assessment of the inventive step and non-obviousness varies from one country to another. For instance, the practice of the European Patent Office (EPO) differs from the practice in the United Kingdom.

European Patent Convention

Main article: Inventive step under the European Patent Convention

Pursuant to the Article 52(1) in conjunction with Article 56, first sentence, EPC, European patents shall be granted for inventions which, among other things, involve an inventive step, that is, the invention, having regard to the state of the art, must not be obvious to a person skilled in the art.

Problem-solution approach

The Examining Divisions, the Opposition Divisions, and the Boards of Appeal of the EPO almost always apply the "problem-solution approach" in order to decide whether an invention involves an inventive step. The approach consists in:

1. identifying the closest prior art, the most relevant prior art;
2. determining the objective technical problem, that is, determining, in the view of the closest prior art, the technical problem which the claimed invention addresses and successfully solves; and
3. examining whether or not the claimed solution to the objective technical problem is obvious for the skilled person in view of the state of the art in general.

This last step is conducted according to the "could-would approach". Pursuant to this approach, the question to address in order to assess whether the invention involves an inventive step is the following (the question is the climax of the problem-solution approach):

Is there any teaching in the prior art, as a whole, that would, not simply could, have prompted the skilled person, faced with the objective technical problem formulated when considering the technical features not disclosed by the closest prior art, to modify or adapt said closest prior art while taking account of that teaching [the teaching of the prior art, not just the teaching of the closest prior art], thereby arriving at something falling within the terms of the claims, and thus achieving what the invention achieves?

If the skilled person would have been prompted to modify the closest prior art in such a way as to arrive at something falling within the terms of the claims, then the invention does not involve an inventive step.

The point is not whether the skilled person could have arrived at the invention by adapting or modifying the closest prior art, but whether he would have done so because the prior art incited him to do so in the hope of solving the objective technical problem or in expectation of some improvement or advantage. This must have been the case for the skilled person before the filing or priority date valid for the claim under examination.

For a discussion of the inventive step test for "software patents" and "computer-implemented inventions" under the EPO case law, see also "Inventive step test" section in Software patents under the EPC.

United Kingdom

A set of rules regarding the approach taken by the United Kingdom courts was laid out by the Court of Appeal in Windsurfing International Inc. v Tabur Marine (GB) Ltd. [1985] RPC 59, in determining the requirements for inventive step:

1. Identifying the inventive concept embodied in the patent;
2. Imputing to a normally skilled but unimaginative addressee what was common general knowledge in the art at the priority date;
3. Identifying the differences if any between the matter cited and the alleged invention; and
4. Deciding whether those differences, viewed without any knowledge of the alleged invention, constituted steps which would have been obvious to the skilled man or whether they required any degree of invention.

This test has been slightly reworked in the more recent Court of Appeal case Pozzoli Spa v BDMO SA & Anor [2007] EWCA Civ 588 (22 June 2007)

1. (a) Identify the notional "person skilled in the art", (b) Identify the relevant common general knowledge of that person;
2. Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;
3. Identify what, if any, differences exist between the matter cited as forming part of the "state of the art" and the inventive concept of the claim or the claim as construed;
4. Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?

In Schlumberger Holdings Ltd v Electromagnetic Geoservices AS [2010] EWCA Civ 819 (28 July 2010) the Court of Appeal clarified that the fictional skilled addressee (which may be a skilled team) used for determining inventive step can vary from the one used for determining claim construction or sufficiency.

United States

"Non-obviousness" is the term used in US patent law to describe one of the requirements that an invention must meet to qualify for patentability, codified in 35 U.S.C. §103. One of the main requirements of patentability is that the invention being patented is not obvious, meaning that a "person having ordinary skill in the art" would not know how to solve the problem at which the invention is directed by using exactly the same mechanism. The Graham Factors, shown below, are used by courts to determine if the claimed invention is nonobvious.

Teaching-suggestion-motivation (TSM) test

Further, the combination of previously known elements can be considered obvious. As stated by Winner Int'l Royalty Corp. v. Wang, 202 F.3d. 1340, 1348 (Fed. Cir., 2000), there must be a suggestion or teaching in the prior art to combine elements shown in the prior art in order to find a patent obvious. Thus, in general the critical inquiry is whether there is something in the prior art to suggest the desirability, and thus the obvious nature, of the combination of previously known elements.

This requirement is generally referred to as the "teaching-suggestion-motivation" (TSM) test and serves to prevent against hindsight bias (In re Kahn, Fed. Cir. 2006). As almost all inventions are some combination of known elements, the TSM test requires a patent examiner (or accused infringer) to show that some suggestion or motivation exists to combine known elements to form a claimed invention. Some critics of the TSM test have claimed that the test requires evidence of an explicit teaching or suggestion to make a particular modification to the prior art, but the Federal circuit has made clear that the motivation may be implicit, and may be provided for example by an advantage resulting from the modification. In other words, an explicit prior art teaching or suggestion to make a particular modification is sufficient, but not required for a finding of obviousness.

The TSM test has been the subject of much criticism. The U.S. Supreme Court addressed the issue in KSR v. Teleflex (2006). The unanimous decision, rendered on April 30, 2007, overturned a decision of the Federal Circuit and held that it "analyzed the issue in a narrow, rigid manner inconsistent with §103 and our precedents," referring to the Federal Circuit's application of the TSM test. The court held that, while the ideas behind the TSM test and the Graham analysis were not necessarily inconsistent, the true test of nonobviousness is the Graham analysis. However, according to former Chief Judge Michel and current Chief Judge Rader, the TSM test remains a part of the Federal Circuit's analysis, though it is applied mindful of the decision in KSR. A KSR-style obviousness analysis was used in Perfect Web Technologies, Inc. v. InfoUSA, Inc. to invalidate a patent due to the obvious nature of the asserted claims.

Graham factors

The factors a court will look at when determining obviousness in the United States were outlined by the Supreme Court in Graham et al. v. John Deere Co. of Kansas City et al., 383 U.S. 1 (1966) and are commonly referred to as the "Graham factors". The court held that obviousness should be determined by looking at

1. the scope and content of the prior art;
2. the level of ordinary skill in the art;
3. the differences between the claimed invention and the prior art; and
4. objective evidence of nonobviousness.

In addition, the court outlined examples of factors that show "objective evidence of nonobviousness". They are:

1. commercial success;
2. long-felt but unsolved needs; and
3. failure of others.

Other courts have considered additional factors as well. See Environmental Designs, Ltd. v. Union Oil Co. of Cal., 713 F.2d 693, 697-98, 218 USPQ 865, 869 (Fed. Cir. 1983) (considering skepticism or disbelief before the invention as an indicator of nonobviousness); Allen Archery, Inc. v. Browning Mfg. Co., 819 F.2d 1087, 1092, 2 USPQ2d 1490, 1493 (Fed. Cir. 1987) (considering copying, praise, unexpected results, and industry acceptance as indicators of nonobviousness); Diversitech Corp. v. Century Steps, Inc., 850 F.2d 675, 679, 7 USPQ2d 1315, 1319 (Fed. Cir. 1988) (considering copying as an indicator of nonobviousness).

Historical development

The grant of a U.S. patent has always required more than simple novelty as illustrated by Thomas Jefferson's 1813 letter explaining that changing material to "chain, rope, or leather" was insufficient for patentability. However, the Supreme Court's pronouncement in Hotchkiss v. Greenwood is generally regarded as the Court's first attempt to explain the theory.

The Court's decision in Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp. is often considered the high-water mark of the application of obviousness doctrine as the Court reversed the patent grant of a commercially successful mechanical device as merely a "gadget." After Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., the U.S. Congress passed the Patent Act of 1952, in part, to reduce the impact of nonobviousness on patentability and to eliminate the flash of genius test.

The Supreme Court would later interpret the Patent Act of 1952 in Graham v. John Deere Co., United States v. Adams, and Calmar v. Cook Chemical.

Canada

Main article: Novelty and non-obviousness in Canadian patent law

The requirement for non-obviousness is codified under section 28.3 of the Patent Act (R.S.C., 1985, c. P-4).

28.3 The subject-matter defined by a claim in an application for a patent in Canada must be subject-matter that would not have been obvious on the claim date to a person skilled in the art or science to which it pertains, having regard to

(a) information disclosed more than one year before the filing date by the applicant, or by a person who obtained knowledge, directly or indirectly, from the applicant in such a manner that the information became available to the public in Canada or elsewhere; and

(b) information disclosed before the claim date by a person not mentioned in paragraph (a) in such a manner that the information became available to the public in Canada or elsewhere.

The Supreme Court of Canada affirmed the test for non-obviousness laid out in Windsurfing International Inc. v. Tabur Marine (Great Britain) Ltd. in Apotex Inc. v. Sanofi‑Synthelabo Canada Inc.:

1. Identify the notional “person skilled in the art” and identify the relevant common general knowledge of that person;
2. Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;
3. Identify what, if any, differences exist between the matter cited as forming part of the “state of the art” and the inventive concept of the claim or the claim as construed;
4. Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?

Further reading

• G. Knesch, Assessing Inventive Step in Examination and Opposition Proceedings in the EPO, epi Information 3/1994, pp 95–101.

See also

• Hotchkiss v. Greenwood (United States Supreme Court, 1850)
• Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp. (United States Supreme Court, 1950)
• Flash of genius (former United States patentability test)
• Priority right

External links

• European Patent Convention
  • Article 52 EPC
  • Article 56 EPC
  • Guidelines for Examination in the EPO, section c-iv, 11 ("Inventive step")
  • Could-would approach
    • Guidelines for Examination in the EPO, section c-iv, 11.7.3 ("Could-would approach") and Technical Board of Appeal decision T2/83 of 15 March 1984.