Inventive Step - Part III on Non-Obviousness
Isn't it the same as non-obviousness?

The expression "inventive step" is predominantly used by our European brethren, both in individual states like the UK or Germany as well as the European Patent Office (EPO). And yes, it means almost the same thing as non-obviousness as used in the US Patent Office.

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.

Although the differences are slight it is worthwhile to examine them for learning.

European Patent Office

The EPO states (Article 52 and Article 56) that European patents shall be granted for inventions that 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.

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. There are several prongs to the test:

    1. identify the closest, the most relevant prior art;

    2. determine the objective technical problem, that is, by examining the closest prior art, define the technical problem the claimed invention solves;

    3. define the skilled person; and

    4. examine 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". This is usually described as follows:

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.

The United Kingdom Approach

The UK approach is based on a set of steps from a case before the Court of Appeal (Windsurfing International Inc. v Tabur Marine (GB) Ltd. [1985]). The questions are:

    1. Identifying the inventive concept embodied in the patent;

    2. Imputing to a normally skilled but unimaginative person 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 but unimaginative person or whether they required any degree of invention.

The United States Approach

I have discussed the U.S. approach (the Graham factors and secondary considerations) in Part II of 35 USC 103. In addition to those the U.S. also has in the past made ample use of another test and we should explain it after reviewing the EPO and UK tests.

Teaching-Suggestion-Motivation (TSM) test

The TSM test is aimed at preventing against a hindsight bias. As almost all inventions are some combination of known elements, the TSM test requires the patent examiner to show that some suggestion or motivation exists to combine known elements to form a claimed invention. Said another way - 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. The rub comes in over arguments over whether the test requires evidence that is explicit or implicit.

There has been much criticism of TSM because of it's subjectiveness. But quite frankly non-obviousness or inventive step is a subjective issue.

The Supreme court addressed the TSM issue in a famous case (KSR v. Teleflex) in 2006. So the U.S. now has new guidelines. We will discuss those in Part IV.

So How Do You Decide Inventive Step or Non-Obviousness?

Quite frankly, and unfortunately, decisions on inventive step are not high resolution photographs - they are more like a finger pointing into the mist. So how should it be argued.

For my nickel - I prefer the problem solution approach of the EPO. I have mentioned in other articles that I set through about 14 Opposition hearings in the EPO. Maybe because I am an engineer and like defined thought processes it appealed to me. In the first step you had to define the closest prior art. Then you had to define the problem to be solved by the invention and define the skilled person. Then you had to argue that the solution of the invention did or did not involve an inventive step in light of the prior art at that time.

Is that a high resolution photograph. No. But after sitting through that argument many times on different patent claims it seemed a more logical approach than any other I had considered.

Non-obviousness arguments will continue to be the way many practitioners earn their pay.


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Mike Ervin
Mike Ervin - Cost Effective Small Business Patent Protection.

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