When applying for a patent, inventors must satisfy several important legal requirements. One of the key requirements is the concept of ‘inventive step,’ also known as ‘non-obviousness’ in some jurisdictions. This aspect ensures that the invention represents a significant technical advance compared to existing knowledge or technology, rather than being a simple or predictable improvement. Understanding what constitutes an inventive step in patent law is crucial for inventors, companies, and legal professionals navigating the intellectual property system.
Definition of Inventive Step
An inventive step refers to a feature of an invention that involves technical advancement and is not obvious to a person skilled in the art. In simpler terms, the invention must go beyond what a skilled professional in the same field would find obvious or routine. This requirement prevents the granting of patents for trivial developments or minor changes that do not offer a substantial improvement over the existing state of the art.
Inventive Step vs. Novelty
It’s important to distinguish between inventive step and novelty. While novelty means that the invention is new and has not been disclosed anywhere before, the inventive step focuses on how obvious the new invention would be to a professional in the field. An invention may be new (novel), but if it is an obvious combination of known techniques, it may not satisfy the inventive step requirement.
Legal Standards and Interpretation
The standard for determining an inventive step can vary depending on the jurisdiction. For example, the European Patent Office (EPO) applies the problem-solution approach, while the United States Patent and Trademark Office (USPTO) focuses on the concept of non-obviousness as described under 35 U.S.C. § 103. Despite these variations, the core idea remains consistent: the invention must not be an obvious development to someone skilled in the art.
The Skilled Person in the Art
The term ‘person skilled in the art’ refers to a hypothetical individual who has average knowledge and skills in the specific technical field of the invention. This person is not creative or inventive, but they are familiar with all the common techniques and information available before the priority date of the patent application. The test for an inventive step examines whether this skilled person would consider the invention obvious in light of existing knowledge.
Assessing Inventive Step: The Problem-Solution Approach
One widely used method to assess inventive step is the problem-solution approach, especially in European patent law. This method involves the following steps:
- Identify the closest prior art
- Determine the objective technical problem to be solved
- Examine whether the solution to this problem would have been obvious to the skilled person
If the solution is not obvious, the invention is considered to have an inventive step. This approach helps maintain a structured and consistent evaluation method for patent examiners.
Examples of Inventions with and without Inventive Step
Understanding how the inventive step works is easier with practical examples:
Example 1: Lacking Inventive Step
Suppose someone applies for a patent on a pencil with an attached eraser. If pencils and erasers are both well-known, and attaching them together is something that has been done before or is predictable to professionals in the field, the patent application might fail the inventive step requirement. It lacks technical advancement and would be seen as obvious.
Example 2: Meeting the Inventive Step
Consider a newly developed drug that treats a disease in a novel way by using a specific chemical compound not previously used for that purpose. If existing treatments do not suggest this approach and the compound’s effectiveness is surprising, the invention may have an inventive step, assuming all other criteria are met.
Obviousness in U.S. Patent Law
In the U.S., the concept of an inventive step is expressed as ‘non-obviousness.’ Under 35 U.S.C. § 103, an invention must not be obvious to a person having ordinary skill in the art at the time the invention was made. The landmark Supreme Court caseGraham v. John Deere Co.established several factors for evaluating obviousness:
- The scope and content of prior art
- The differences between the prior art and the claims
- The level of ordinary skill in the art
- Secondary considerations such as commercial success, long-felt need, and failure of others
These factors help determine whether the claimed invention involves an adequate inventive contribution.
Common Challenges and Rejections
Patent applicants often face rejections based on a lack of inventive step. Examiners may argue that the invention is a routine modification or a predictable use of existing technologies. To overcome this, applicants can present technical evidence, experimental data, or expert declarations showing how the invention solves a previously unsolved problem or achieves unexpected results.
Overcoming Inventive Step Rejections
Some strategies for addressing inventive step challenges include:
- Highlighting the technical advantages and unexpected benefits of the invention
- Providing comparative data to show improved performance
- Reframing the problem being solved to emphasize innovation
- Arguing against the motivation to combine prior references
These approaches can support a more convincing argument for the presence of an inventive step.
Global Perspectives and Harmonization
While the inventive step requirement is recognized worldwide, countries interpret it differently based on local patent laws and precedents. However, international treaties such as the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) promote harmonization. TRIPS requires member countries to grant patents for inventions that are new, involve an inventive step, and are capable of industrial application.
Despite this, each country retains flexibility in defining what qualifies as an inventive step. Therefore, inventors seeking global patent protection should tailor their applications to align with the specific criteria in each jurisdiction.
Importance of Inventive Step in Innovation
The requirement of an inventive step is more than a legal formality it plays a vital role in maintaining the balance between rewarding innovation and preventing monopolies over obvious ideas. By requiring true technical advancement, patent systems encourage meaningful progress in science, engineering, and technology. This principle ensures that the exclusive rights granted by a patent are justified and benefit society as a whole.
In summary, the inventive step is a crucial component of patent eligibility, ensuring that patents are granted only to inventions that contribute significantly beyond existing knowledge. It serves as a safeguard against trivial patents and supports genuine innovation. Understanding this concept helps inventors prepare stronger patent applications and protects the integrity of the patent system. Whether developing new pharmaceuticals, software, or mechanical devices, applicants must demonstrate that their invention is not only new but also non-obvious in the eyes of skilled professionals in the field.