In the European patent system, the concept of ‘inventive step’ plays a central role in determining whether a patent can be granted. While the novelty requirement ensures that an invention is new, the inventive step criterion evaluates whether the invention would have been obvious to a person skilled in the art at the time of the application. This principle is enshrined in topic 56 of the European Patent Convention (EPC), and over the years, the Boards of Appeal of the European Patent Office (EPO) have developed a substantial body of case law to interpret and apply it. Understanding how the EPO case law handles the inventive step requirement is critical for patent attorneys, inventors, and applicants seeking protection in Europe.
Understanding Inventive Step under the EPC
Definition of Inventive Step
According to topic 56 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. This is a legal standard aimed at promoting true innovation rather than incremental modifications or routine developments.
The Skilled Person and the State of the Art
The person skilled in the art is a hypothetical figure assumed to possess average knowledge and abilities in a specific technical field. This fictional person is neither inventive nor completely uninformed. Their knowledge forms the baseline for determining whether an invention goes beyond routine creativity. The state of the art refers to all publicly available knowledge and technologies before the filing or priority date of the patent application.
The Problem-Solution Approach
Standard Methodology
The EPO relies heavily on a structured methodology called the problem-solution approach. This approach is designed to provide objectivity and predictability in assessing inventive step. The methodology includes three main stages:
- Step 1: Identify the Closest Prior Art Determine the most relevant piece of prior art, often the one addressing the same or a similar technical problem.
- Step 2: Determine the Objective Technical Problem Based on the difference between the claimed invention and the closest prior art, define the technical problem that the invention aims to solve.
- Step 3: Assess Obviousness Evaluate whether the claimed solution to the objective technical problem would have been obvious to the skilled person in view of the prior art.
Importance in EPO Case Law
Consistent application of the problem-solution approach is a hallmark of EPO jurisprudence. Decisions such as T 0246/91 and T 0939/92 have reinforced the importance of this method, emphasizing that deviation from this approach can lead to legal uncertainty and potential reversal on appeal.
Notable EPO Decisions on Inventive Step
Case T 0641/00 (Two Identities)
This case introduced the concept of could-would in evaluating inventive step. The decision made it clear that merely because the skilled person could arrive at the invention does not imply that they would have done so with a reasonable expectation of success. Motivation and predictability play a key role in inventive step analysis.
Case T 0939/92 (Agrevo Case)
This decision emphasized that the problem-solution approach must be objective. In this case, the Board clarified that the technical problem must be derived from the application as filed and based on the closest prior art. Applicants are not free to arbitrarily choose any problem post hoc to demonstrate inventiveness.
Case T 1212/01
In this ruling, the EPO clarified the role of secondary indicia, such as commercial success or long-felt need. While these factors can support the existence of an inventive step, they are considered supplementary and not substitutes for the main problem-solution analysis.
Common Pitfalls in Inventive Step Analysis
Combining Prior Art Without Motivation
One of the most frequently encountered errors in rejecting an application for lack of inventive step is combining multiple prior art references without proper motivation. EPO case law insists that there must be a clear and logical reason for a skilled person to combine teachings from different documents. Otherwise, the rejection may be overturned on appeal.
Improperly Formulated Technical Problems
Sometimes, applicants present overly broad or speculative problems to make their invention appear more inventive. However, case law such as T 0493/08 has shown that the problem must be tightly connected to the distinguishing features of the invention over the prior art.
Inventive Step in Different Technical Fields
Pharmaceutical and Biotech Patents
In these fields, inventive step assessments can be particularly challenging due to the unpredictability of biological systems. EPO case law recognizes this and often demands more data or evidence to show that a claimed effect is achieved. For example, case T 0604/04 ruled that even an apparently minor structural modification in a drug could be inventive if it unexpectedly improved therapeutic efficacy.
Mechanical and Electrical Inventions
For mechanical and electronic technologies, the EPO tends to apply a stricter standard, expecting that a skilled person could often make straightforward improvements. As such, the bar for inventive step is higher unless the invention solves a non-obvious technical problem or leads to an unexpected advantage.
Tips for Demonstrating Inventive Step
- Provide Comparative Data Show how your invention performs better than the prior art using experimental results or simulations.
- Highlight Unexpected Effects Demonstrate technical advantages that would not have been predicted by a skilled person.
- Avoid Arbitrary Problem Definitions Align the technical problem closely with the actual contribution of the invention.
- Anticipate Prior Art Combinations Address how and why certain prior art documents would or would not be combined by the skilled person.
The concept of inventive step is one of the cornerstones of patentability under the European Patent Convention. Through years of case law, the EPO has developed a clear and structured approach to assessing this requirement. The problem-solution method offers a reliable framework for both applicants and examiners. Understanding key decisions, potential pitfalls, and strategic approaches to framing technical problems can make a significant difference in the success of a patent application. Whether in biotechnology, electronics, or mechanical engineering, a careful analysis of inventive step under EPO case law can help ensure that real innovations receive the protection they deserve.