EPO express

Inventive Step of a European Patent application

Indications of inventive step

When assessing inventive step, it is not a question of the subjective achievement of an inventor (T 0024/81 (Metal refining) of 13.10.1982), but what problems an average skilled person in the art had to overcome. The individual history of the invention therefore is irrelevant. The average skilled person is a legal fiction. The same invention that may be have seemed a piece of cake for a top specialist in his field may have appeared to a beginner in this technical field as an insurmountable obstacle. And yet, the achievement of both inventors is measured by the same standard.

For example, at the German Patent Office Examiners accepted so-called indications of inventive step. Such an indication is for example that although a need for an invention existed for a long time, no disclosure could be found that this problem was solved before. There are of course two sides to a medal. The reason no-one made the invention before could also lay in the fact that the solution was regarded as too expensive, and therefore not competitive with the prior art solution. If for reasons the invention did not control, the solution became available at competitive cost, the invention may have been a mere choice between equally suitable solutions.

The problem-solution approach of the EPO

In search to introduce objectivity for the assessment of inventive step the EPO developed as a standard of choice the so-called problem-solution approach.

Objectivity in the assessment of inventive step is achieved by starting out from the objectively ruling state of the art, in the light of which the technical problem is determined which the invention addresses and solves from an objective point of view. Consideration is given to the question of the obviousness of the disclosed solution to this problem as seen by the man skilled in the art and having those capabilities which can be objectively expected of him. In contrast a mere investigation for indications of the presence of inventive step is no substitute for the technically skilled assessment of the invention vis-a-vis the state of the art, pursuant to Article 56 EPC. Where such indications are present, the overall picture of the state of the art and consideration of all significant factors may show that inventive step is involved, but will not necessarily do so.

When examining for inventive step, the state of the art must be assessed from the point of view of the man skilled in the art at the time of priority relevant for the application. Consequently, all previously published embodiments must be taken into consideration which offered a suggestion to the skilled practitioner for solving the problem addressed, even where those embodiments were not particularly emphasised (T 0024/81 (Metal refining) of 13.10.1982)

Mosaic combination of prior art to deny inventive step is not admissible

While it is inadmissible to combine unrelated or conflicting documents mosaically in order to deny inventive step, it is indeed permissible to consider various publications and information jointly to prove a prejudice or a general trend in the art pointing away from the invention (T 0002/81 (Methylenebis(phenylisocyanate)) of 1.7.1982)