Inventive step and non-obviousness
Encyclopedia
The inventive step and non-obviousness reflect a same general patentability
requirement present in most patent
law
s, 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.
s 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.
s, the Opposition Division
s, 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:
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):
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
.
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)
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.
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.
(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.
In addition, the court outlined examples of factors that show "objective evidence of nonobviousness". They are:
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).
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.
.
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.:
Patentability
Within the context of a national or multilateral body of law, an invention is patentable if it meets the relevant legal conditions to be granted a patent...
requirement present in most patent
Patent
A patent is a form of intellectual property. It consists of a set of exclusive rights granted by a sovereign state to an inventor or their assignee for a limited period of time in exchange for the public disclosure of an invention....
law
Law
Law is a system of rules and guidelines which are enforced through social institutions to govern behavior, wherever possible. It shapes politics, economics and society in numerous ways and serves as a social mediator of relations between people. Contract law regulates everything from buying a bus...
s, according to which an invention
Invention
An invention is a novel composition, device, or process. An invention may be derived from a pre-existing model or idea, or it could be independently conceived, in which case it may be a radical breakthrough. In addition, there is cultural invention, which is an innovative set of useful social...
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
European Patent Convention
The Convention on the Grant of European Patents of 5 October 1973, commonly known as the European Patent Convention , is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to which European patents are granted...
(EPC), while the expression "non-obviousness" is predominantly used in United States patent law
United States patent law
United States patent law was established "to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;" as provided by the United States Constitution. Congress implemented these...
. 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
European Patent Office
The European Patent Office is one of the two organs of the European Patent Organisation , the other being the Administrative Council. The EPO acts as executive body for the Organisation while the Administrative Council acts as its supervisory body as well as, to a limited extent, its legislative...
(EPO) differs from the practice in the United Kingdom.
European Patent Convention
Pursuant to the Article 52(1) in conjunction with Article 56, first sentence, EPC, European patents shall be granted for inventionInvention
An invention is a novel composition, device, or process. An invention may be derived from a pre-existing model or idea, or it could be independently conceived, in which case it may be a radical breakthrough. In addition, there is cultural invention, which is an innovative set of useful social...
s which, among other things, involve an inventive step, that is, the invention, having regard to the state of the art
State of the art
The state of the art is the highest level of development, as of a device, technique, or scientific field, achieved at a particular time. It also refers to the level of development reached at any particular time as a result of the latest methodologies employed.- Origin :The earliest use of the term...
, must not be obvious to a person skilled in the art.
Problem-solution approach
The Examining DivisionGrant procedure before the European Patent Office
The grant procedure before the European Patent Office is an ex parte, administrative procedure, which includes the filing of a European patent application, the examination of formalities, the establishment of a search report, the publication of the application, its substantive examination, and the...
s, the Opposition Division
Opposition procedure before the European Patent Office
The opposition procedure before the European Patent Office is a post-grant, contentious, inter partes, administrative procedure intended to allow any European patent to be centrally opposed...
s, and the Boards of Appeal of the EPO
Appeal procedure before the European Patent Office
Decisions of the first instances of the European Patent Office can be appealed, i.e. challenged, before the Boards of Appeal of the EPO, in a judicial procedure , as opposed to an administrative procedure. These boards act as the final instances in the granting and opposition procedures before the...
almost always apply the "problem-solution approach" in order to decide whether an invention involves an inventive step. The approach consists in:
- identifying the closest prior art, the most relevant prior art;
- determining the objective technical problem, that is, determining, in the view of the closest prior art, the technical problem which the claimClaim (patent)Patent claims are the part of a patent or patent application that defines the scope of protection granted by the patent. The claims define, in technical terms, the extent of the protection conferred by a patent, or the protection sought in a patent application...
ed invention addresses and successfully solves; and - 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
Climax
- Common general uses :* Climax * Climax * Climax community* Climax vegetation in an ecosystem* Sexual climax, another term for orgasm- Brand names and titles :* The Climax, a 1944 film...
of the problem-solution approach):
- Is there any teaching in the prior artPrior artPrior art , in most systems of patent law, constitutes all information that has been made available to the public in any form before a given date that might be relevant to a patent's claims of originality...
, 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
Priority right
In patent, industrial design rights and trademark laws, a priority right or right of priority is a time-limited right, triggered by the first filing of an application for a patent, an industrial design or a trademark respectively...
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
Software patents under the European Patent Convention
The patentability of software, computer programs and computer-implemented inventions under the European Patent Convention is the extent to which subject matter in these fields is patentable under the Convention on the Grant of European Patents of October 5, 1973...
.
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:- Identifying the inventive concept embodied in the patent;
- Imputing to a normally skilled but unimaginative addressee what was common general knowledge in the art at the priority date;
- Identifying the differences if any between the matter cited and the alleged invention; and
- 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)
- (a) Identify the notional "person skilled in the art", (b) Identify the relevant common general knowledge of that person;
- Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;
- 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;
- 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 USUnited States
The United States of America is a federal constitutional republic comprising fifty states and a federal district...
patent law to describe one of the requirements that an invention must meet to qualify for patentability, codified in 35 U.S.C. §103
Title 35 of the United States Code
Title 35 of the United States Code is a title of United States Code regarding patent law. The sections of Title 35 govern all aspects of patent law in the United States. There are currently 37 chapters, which include 376 sections , in Title 35.Federally recognized forms of intellectual property are...
. 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
Person having ordinary skill in the art
The person having ordinary skill in the art , the person of ordinary skill in the art, the skilled addressee, person skilled in the art or simply the skilled person is a legal fiction found in many patent laws throughout the world...
" 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, 1348Case citation
Case citation is the system used in many countries to identify the decisions in past court cases, either in special series of books called reporters or law reports, or in a 'neutral' form which will identify a decision wherever it was reported...
(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
KSR v. Teleflex
KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398 , is a decision by the Supreme Court of the United States concerning the issue of obviousness as applied to patent claims.-Case history:...
(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
Paul Redmond Michel
Paul Redmond Michel was an American federal judge on the United States Court of Appeals for the Federal Circuit from 1988 until 2010, and served as its chief judge from 2004 until his retirement....
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.
Perfect Web Technologies, Inc. v. InfoUSA, Inc.
Perfect Web Technologies, Inc. v. InfoUSA, Inc. 587 F.3d 1324 , is a United States Court of Appeals for the Federal Circuit case in which the court held that a patent can be invalidated due to the obvious nature of the asserted claims...
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 and non-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- the scope and content of the prior art;
- the level of ordinary skill in the art;
- the differences between the claimed invention and the prior art; and
- objective evidence of nonobviousness.
In addition, the court outlined examples of factors that show "objective evidence of nonobviousness". They are:
- commercial success;
- long-felt but unsolved needs; and
- 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
United States Patents Quarterly
The United States Patents Quarterly is a United States legal reporter published by the Bureau of National Affairs in Washington, D.C. The USPQ covers intellectual property cases including patents, copyrights, trademarks, and trade secrets, from 1913 to the present.The USPQ reports case law from...
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. GreenwoodHotchkiss v. Greenwood
Hotchkiss v. Greenwood, 52 U.S. 248 is a United States Supreme Court case of 1850. It was the first US Supreme Court case to introduce the concept of non-obviousness as patentability requirement in United States patent law. -External links:*...
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.
Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp.
Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147 , is a patent case decided by the United States Supreme Court...
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
Patent Act of 1952
The U.S. Patent Act of 1952 clarified and simplified existing U.S. patent law. It also effected substantive changes, including the incorporation of the requirement for invention and the judicial doctrine of contributory infringement The U.S. Patent Act of 1952 clarified and simplified existing...
, in part, to reduce the impact of nonobviousness on patentability and to eliminate the flash of genius
Flash of genius
The Flash of Genius Doctrine or Flash of Genius Test was a test for patentability used by the United States Federal Courts for over a decade, circa 1941. The doctrine was formalized in Cuno Engineering v. Automatic Devices., which held that the inventive act had to come into the mind of an...
test.
The Supreme Court would later interpret the Patent Act of 1952 in Graham v. John Deere Co.
Graham v. John Deere Co.
Graham v. John Deere Co., 383 U.S. 1 , was a case in which the United States Supreme Court clarified the nonobviousness requirement in United States patent law, set forth in .-Facts and procedural history:...
, United States v. Adams
United States v. Adams
United States v. Adams, , is a United States Supreme Court decision in the area of patent law. This case was later cited in KSR v. Teleflex as an example of a case satisfying the requirement for non-obviousness of a combination of known elements...
, and Calmar v. Cook Chemical.
Canada
The requirement for non-obviousness is codified under section 28.3 of the Patent Act (R.S.C., 1985, c. P-4)Patent Act (Canada)
The Canadian Patent Act is Canadian federal legislation and is one of the main pieces of Canadian legislation governing patent law in Canada. It sets out the criteria for patentability, what can and cannot be patented in Canada, the process for obtaining a Canadian patent, and provides for the...
.
The Supreme Court of Canada
Supreme Court of Canada
The Supreme Court of Canada is the highest court of Canada and is the final court of appeals in the Canadian justice system. The court grants permission to between 40 and 75 litigants each year to appeal decisions rendered by provincial, territorial and federal appellate courts, and its decisions...
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.:
- Identify the notional “person skilled in the art” and identify the relevant common general knowledge of that person;
- Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;
- 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;
- 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. GreenwoodHotchkiss v. GreenwoodHotchkiss v. Greenwood, 52 U.S. 248 is a United States Supreme Court case of 1850. It was the first US Supreme Court case to introduce the concept of non-obviousness as patentability requirement in United States patent law. -External links:*...
(United States Supreme Court, 1850) - Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp.Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp.Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147 , is a patent case decided by the United States Supreme Court...
(United States Supreme Court, 1950) - Flash of geniusFlash of geniusThe Flash of Genius Doctrine or Flash of Genius Test was a test for patentability used by the United States Federal Courts for over a decade, circa 1941. The doctrine was formalized in Cuno Engineering v. Automatic Devices., which held that the inventive act had to come into the mind of an...
(former United States patentability test) - Priority rightPriority rightIn patent, industrial design rights and trademark laws, a priority right or right of priority is a time-limited right, triggered by the first filing of an application for a patent, an industrial design or a trademark respectively...
External links
- European Patent Convention
- ("Inventive step")
- Could-would approach
- ("Could-would approach") and Technical Board of Appeal decision T2/83 of 15 March 1984.