Inventive Step

In many laws, the inventive step requirement means that a claimed invention shall not be obvious to a person skilled in the art at the time of the filing date (or, where applicable, priority date), or at the time the invention was made, in view of the prior art. In some countries, instead of the expression “obvious” (or “non-obvious”), expressions such as “inventions which could have been easily made” or “[an invention] having prominent substantive features and representing a notable progress” appear in national laws. Whatever term is used, the definition of “prior art” or “state of the art”, directly affects the determination of the inventive step. Where the scope of the prior art is limited, it is more likely that a certain claimed invention would be considered as involving an inventive step. Further, as for the novelty requirement, the interpretation and determination of the scope of the claimed invention is essential for the determination of the inventive step. 

National and regional authorities have developed various methodologies that can be applied when assessing inventive step, such as the “problem and solution”-approach used in the EPO, the “Graham test” in the United States of America and the “reasoning test” in Japan. Further, the interpretation of the term “inventive step”(“non-obviousness”) by national courts has developed into a body of case law in many countries. Since a vast majority of inventions are based on existing inventions, how to assess inventive step in an invention based on a combination of existing features has been extensively developed in a number of jurisdictions. Based on such case law, a number of patent offices publish examination guidelines, which are addressed primarily to the office’s examiners for consistent application of the law, but also to applicants and patent practitioners for a better understanding of office practices.64 Such examination guidelines typically contain the methodology, various factors to be taken into consideration (for example, problems to be solved by the invention, advantageous effects of the invention and secondary considerations such as commercial success and long-felt needs) and practical examples in various technical fields.