Article: Framework of Approaches to Inventive Step Assessment

Inventive step is one of the essential requirements for an invention to be patentable. The assessment/evaluation of an inventive step is critical as well as challenging, irrespective of the fact whether you want to acquire or oppose a patent. The approach used for its assessment is quite ambiguous and varies from one geography to another. The present article is aimed at understanding and briefly summarizing the approaches followed by some of the major patenting systems like EPO, USPTO, Japan, Korea, Thailand, China & India for the assessment of inventive step.

Majority of inventions are built upon the prior art, either by adding new features/elements or by combining known elements in novel ways. Therefore, we can safely assume that an invention typically comprises of knowledge gained from the prior art (i.e. State of the Art) and an additional component (i.e. improvement /modification/new feature) contributed by an inventor. Now, if the inclusion of this additional component is obvious to the person having ordinary skill in the art (PHOSITA), the invention is rendered obvious or lacks an inventive step. In practice, obviousness or lack of inventive step is generally evaluated using certain guidelines that have been laid down by various cases in different patent jurisdictions.

The expression “non-obviousness” is often used in place of inventive step, as they essentially mean the same. Europe uses “inventive step” or “inventiveness” whereas the United States patent law uses the expression “non-obviousness”.

In patent laws, one of the most important issues in evaluating obviousness of an invention is Hindsight Bias. The literal meaning of Hindsight is “understanding of a situation only after it has happened or developed.” The factor Hindsight Bias becomes extremely important if the claimed invention is a combination of already known elements i.e. a combination invention.

In an ideal scenario, during evaluation of an invention by the patent examiner, the knowledge available at/before the time of filing the patent application should be considered for assessing the obviousness/non-obviousness of the claimed subject matter. But, it is quite inevitable to forget/ignore what is actually known about the claimed invention. (i.e. its features, methods, advantages etc.) For a fair judgement on obviousness, hindsight should be avoided in any patent system.
We have summarized the approaches adopted by some of the major patenting systems for Inventive Step Assessment in the appended table.

Europe United States Japan Korea Thailand India China
Relevant Section/Article Article 56, EPC Article 35, U.S.C. §103 Article 29, Paragraph 2, Japanese Patent Act Article 29, Paragraph 2, Korean Patent Act Section 7, Thai Patent Act, 1999 Section 2(1) (ja), Indian Patents Act, 1970 Article 22, Patent Law of the People’s Republic of China
Approach Adopted (for Inventive Step Assessment) Problem-Solution Approach – TSM Test

– Graham Analysis [Preferred test of non-obviousness]

1. selection of an optimal material

2. comparison of the claimed invention with the cited invention

3. whether the contents of cited inventions disclose a reason or a motivation for the PHOSITA to arrive at the claimed invention

1.identifying the prior art

2.comparison of the claimed invention with the prior art,

3.assessing whether it would have been obvious for the PHOSITA to arrive at the claimed invention

EP Problem-Solution Approach + U.S. secondary considerations. (Problem-solution approach used oftenly) Presently, assessment of non-obviousness is not well defined Problem-Solution Approach (used oftenly)

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