Inventive step at the EPO How it works

1. Inventive step at the EPOHow it works Alfred Spigarelli June , 2015

2. Introduction • Art. 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 • Technical progress is not a requirement for patentability under the EPC • The extent of the monopoly conferred by a patent should correspond to and be justified by the technical contribution to the art • Everything covered by a claim must be inventive Alfred SPIGARELLI, Director Patent Procedures Management

3. Problem and solution approach • Based on Rule 42(1)(c) EPC (Content of the description) • Developed by the Boards of Appeal • It consists essentially of (see Guidelines G-VII, 5): • (a) identifying the closest prior art, • (b) assessing the technical effect achieved by the claimed invention when compared with the "closest state of the art" established, • (c) deriving from the achieved technical effect the objective technical problem to be solved by the claimed invention, and • (d) examining whether or not a skilled person, starting from the closest state of the art, would have arrived to the claimed technical features for solving the technical problem (obviousness test) Alfred SPIGARELLI, Director Patent Procedures Management

4. The prior art under the EPO Art. 54(2) EPC: The state of the art shall be held to comprise everythingmade available to the publicby means of written or oral description, by use, or in any other way, before the date of filingof the European patent application. The term "state of the art" in Art. 54 EPC should be understood as "state of technology", and "everything" in Art. 54(2) EPC is to be understood as concerning the information which is relevant to a field of technology Alfred SPIGARELLI, Director Patent Procedures Management

5. Identifying the "closest prior art” • No special reason need to be provided for selecting the closest prior art among the available relevant prior-art citations: “The closest prior art is the most promising spring board for reaching the claimed subject matter”. • However when the relevant prior art has been identified, it must be assessed whether the person skilled in the art would have good reasons to take this prior art as the starting point for further development? Alfred SPIGARELLI, Director Patent Procedures Management

6. Criteria for selecting the closest prior art Guidelines G-VII, 5.1: • A prior art document disclosing subject-matter conceived for the same purpose or aiming at the same objectiveas the claimed invention and • having the most relevant technical features in common, i.e. requiring the minimum of structural modifications • Similarity of technical problem • The closest prior art must be assessed from the skilled person's point of view on the day before the filing or priority date valid for the claimed invention Alfred SPIGARELLI, Director Patent Procedures Management

7. The person skilled in the art is key in the PSA • The closest prior art is selected by the person skilled in the art of the field of the claimed subject-matter • This person skilled in the art will formulate the objective problem to be solved, i.e. the problem cannot be formulated by the person skilled in the art of the field where the solution lies • The obviousness of the technical solution is assessed with refrencedto the person skilled Alfred SPIGARELLI, Director Patent Procedures Management

8. Who is this famous person skilled in the art? (1) (Guidelines G-VII, 3 ): • The starting point for defining the appropriate skilled person is the technical problem to be solved on the basis of what the prior art disclosed. However, when the problem prompts the skilled person to seek its solution in another technical field, the specialist in that field is the person qualified to solve the problem. • average skilled person without inventive capability but expert in a technical field (a knowledgeable idiot) • access to everything in the state of the art (including prior uses), in particular the documents cited in the search report • at his disposal the normal means and capacity for routine work and experimentation Alfred SPIGARELLI, Director Patent Procedures Management

9. Determination of the technical problem (1) (Guidelines G-VII, 5.2) • The objective technical problem must be a technical one that a skilled person in the particular technical field might be asked to solve at the priority date • The objective technical problem must be derived from physical, chemical etc. effects directly and causally related to the technical features of the claimed invention as specifically as possible • Technical effect has to be at the disposal of the skilled person taking into account the prior art at the time of the priority date and the content of the application in question; and • The technical objective problem addressed should not contain pointers to the solution or partially anticipate the solution • The technical problem does not need to be novel in itself. It can well be simply to find an alternative solution to the known problem. Alfred SPIGARELLI, Director Patent Procedures Management

10. What about the problem formulated in the patent application? • An objective definition of the problem to be solved by the invention should normally start from the problem described in the contested patent • However, the closest prior art is required for defining the problem, and: • If the problem disclosed has not been solved; or • The alleged effect of the distinguishing features against the closest prior art is not supported by evidence; or • If inappropriate prior art is used to define the problem then the objective technical problem has to be adapted to the prior art and/or actual technical effect • Therefore, often the objective technical problem must be reformulated Alfred SPIGARELLI, Director Patent Procedures Management

11. Reformulation of the technical problem (1) • The objective problem is determined by the distinguishing claimed features against the closest prior art (may highlight new technical effects) • Reformulation of the problem by the applicant is only allowable, if the new problem can be deduced from the application as filed: any effect provided by the invention may be used as a basis for reformulating the technical problem • Reformulation of the technical problem should not contradict earlier statements in the application about the general purpose and character of the invention • New effects submitted subsequently during the proceedings could be could necessitate a reformulation of the technical problem initially suggested Alfred SPIGARELLI, Director Patent Procedures Management

12. Reformulation related to subsequentely introduced effects • However, in relation to new effects, • It is not permissible to change the nature of the invention, i.e. the new technical effect must have a technical relationship with the technical problem initially suggested • It is not permissible to rely on an effect which has previously been described as undesirable and of no value by the applicant • The new technical effect must be achieved on the whole scope of the claim: the burden of proof lies with the applicant (the effect must be “plausible”, no “absolute proof” is needed) • The new technical effect is based solely on post/published evidence, i.e. post-published evidence can only be used to back up the teaching derivable from the application Alfred SPIGARELLI, Director Patent Procedures Management

13. "Could-would” approach (1) (Guidelines G-VII, 5.3) • A claimed subject-matter constitutes an obvious solution to an objective technical problem, if the skilled person, in the expectation of solving said problem, would have modified the teaching in the closest prior art document in the light of other teachings in the prior art so as to arrive at the claimed invention • Therefore it is necessary to identify conclusive reasons on the basis of tangible evidence that would have prompted the skilled person to act in such a way • In order to render a solution obvious it is sufficient to establish that the skilled person would have followed the teaching of the prior art with a reasonable expectation of success, “certainty” is not necessary Alfred SPIGARELLI, Director Patent Procedures Management

14. Common general knowledge (Guidelines G-VII, 3.1) • Common general knowledge is represented by basic handbooks and textbooks on the subject in question. • A book providing general teaching in a general technical field covering the invention's specific technical field is part of the general knowledge of a specialist in that specific technical field • General common knowledge does not need to be in writing, i.e. in textbooks or the like, but might simply be a part of the unwritten "mental furniture" of the average skilled person • However, if asserted common general knowledge is challenged, proof of the assertion must be provided, e.g. by documentary or oral evidence Alfred SPIGARELLI, Director Patent Procedures Management

15. Common general knowledge (3) • It is noted that • the state of the art could also perfectly well reside solely in the relevant common general knowledge • the person skilled in the art would always combine the general common knowledge with the closest prior art Alfred SPIGARELLI, Director Patent Procedures Management

16. Distinguishing features • Four cases: • One single distinguishing technical feature • Two or more distinguishing technical features • One non-technical distinguishing feature • At least one non-technical and at least one technical distinguishing feature • Do the distinguishing features contribute to the invention? • Consideration must be given to a feature only if the applicant had provided evidence that it contributed, either independently or in conjunction with one or more of the other features, to the solution of the problem originally proposed by the applicant • The contribution of the features to said solution must be on the overall area claimed Alfred SPIGARELLI, Director Patent Procedures Management

17. Two or more distinguishing technical features • Is it a combination invention? • The relationship between the features or groups of features has to be one of functional reciprocity (i.e. the distinguishing features complement each other) or • The features or groups of features show a combinative effect beyond the sum of their individual effects (i.e. the distinguishing features as functionally interdependent) • It is not enough that the features solve the same technical problem or that their effects are of the same kind and add up to an increased but otherwise unchanged effect • If it is not a combination invention then each distinguishing feature or group of inter-related distinguishing feature solves a partial problem Alfred SPIGARELLI, Director Patent Procedures Management

18. Non-technical distinguishing features (Guidelines G-VII, 5.4) • Under Art. 52(1) EPC clearly specifies that an invention must be in a technological field, i.e. that it must have a technical character • Hence when applying the problem-solution approach both the problem and the solution must have a technical character • Non-technical features, i.e. features of the invention which did not form part of the technical solution to the technical problem, must be disregarded in the assessment of inventive step • However, a non-technical feature might well serve to define the context in which a technical problem occurred Alfred SPIGARELLI, Director Patent Procedures Management

19. Substitution of an element • In the absence of any unexpected effect, the mere substitution of an element by another known for its relevant properties to provide that known effect (i.e. by an equivalent) is not inventive • part of the normal activities of a skilled person to select, from the elements known to him as suitable for a certain purpose, the one which is the most appropriate • The use of a known material on the basis of its known properties and in a known manner to obtain a known effect in a new combination is not inventive ("similar use“ – G-VII, A.1(iii)) • If a component forms part of the state of the art together with its relevant properties, the incorporation thereof in an article in place of a component fulfilling the same purpose will be obvious in view of its predictable beneficial effect ("analogous substitution" – G-VII, A.1(iv)). Alfred SPIGARELLI, Director Patent Procedures Management

20. New use of a known measure • The use of a known measure to achieve a known result on the basis of the expected inherent effect is not inventive ("analogous use" – G-VII, A.1(v)) • If a known measure is used to solve a problem, with no fundamental difference from the one already solved by said measure in a known case, there is no inventive step in adopting said known measure • However the indication of a new and non-obvious technical effect for a known measure, could result in this measure being considered as a new and non-obvious tool for the solution of a new objective technical problem • However, if the prior art indicates a well-established link between the known and the new use, the invention still lacks inventive step Alfred SPIGARELLI, Director Patent Procedures Management

21. Optimisation of parameters • It is a normal activity of the person skilled in the art to optimise a physical property of an apparatus or a parameter of a process in such a way as to reach an acceptable compromise between two effects which were contingent in opposing ways on this property / parameter • The concurrent optimisation of two or more parameters by the solution of known equations based on physical properties / dimensions of an apparatus is not inventive • The optimization of several parameters in order to find a suitable compromise between said parameters is not inventive • However, the fact that individual parameters areas are known per se does not imply that is obvious to combine them specifically to solve a certain problem in absence of any indication in the prior art to do so Alfred SPIGARELLI, Director Patent Procedures Management

22. Small improvement in commercially used process(Guidelines G-VII, 10.3) • The achievement of a numerically small improvement in a process used on a large scale is a valid objective technical problem when assessing the inventiveness of its solution as claimed • However the improvement must be significant, i.e. above margins of errors and normal fluctuations in the concerned field in consequence of other parameters Alfred SPIGARELLI, Director Patent Procedures Management

23. Foreseeable disadvantageous modification(Guidelines G-VII, 10.1) • A foreseeable disadvantageous modification of the closest prior art lacks inventive step • A modification is a " foreseeable disadvantageous modification" if • the skilled person can clearly predict the disadvantages • the assessment of the skilled person is correct • these predictable disadvantages are not compensated by any unexpected technical advantage Alfred SPIGARELLI, Director Patent Procedures Management

24. Simplification of complicated technology • Simplification of complicated technology in situations where the advantages of decreased complexity could be reasonably be expected to outweigh the resulting loss of performance are part of the normal work of the person skilled in the art • The person skilled in the art is able to recognise that in the face of an optimal but complicated solution, less complicated alternatives achieve less perfect results and to envisage said alternatives Alfred SPIGARELLI, Director Patent Procedures Management

25. Reversal of procedural steps • The mere reversal of procedural steps in the production of component parts lack inventive step • A reversal is considered as a "mere" reversal if the results of the reversed steps is identical to the result of the known succession of steps • Also, if a relative movement between two or more parts is present, the mere reversal of the (moving) part(s) lacks inventive step ("cinematic inversion") Alfred SPIGARELLI, Director Patent Procedures Management

26. Automation • Mere automation of functions previously performed by human operators lacks inventive step • The mere idea of executing process steps automatically, e.g. replacing a manual operation by an automatic one, is a normal aim of the skilled person • In developing an automatic process from a known manual process, the person skilled in the art will also incorporate the facilities that automation typically offers like monitoring, control and regulation. Alfred SPIGARELLI, Director Patent Procedures Management

27. Enhanced effect • Work involving mere routine experiments, such as merely conventional trial-and-error experimentation without employing skills beyond common general knowledge, lacks inventive step • As a consequence enhanced effects cannot be used as evidence of inventive step if they emerge from obvious tests Alfred SPIGARELLI, Director Patent Procedures Management

28. Choice of one of several obvious selections(Guidelines G-VII, A.3) • A merely arbitrary choice from a host of possible solutions lacks inventive step, since applying one of the possible solution known to the skilled person requires no particular skill • In order to deny inventive step, it is irrelevant that several other possible solutions are known and that no hint is present in the prior art to select the specific solution • It is sufficient that the chosen solution is obvious per se • Inventive step can only be justified by a hitherto unknown technical effect that distinguishes the claimed solutions from the other solutions "purposive selection") Alfred SPIGARELLI, Director Patent Procedures Management

29. Selection from obvious alternatives • The simple act of arbitrarily selecting one among equally obvious alternative variations is devoid of any inventive character • The person skilled in the art when choosing between well-known alternatives would balance the advantages of the specific alternative against its disadvantages taking into account the particular situation Alfred SPIGARELLI, Director Patent Procedures Management

30. Thank you for your attention! Alfred Spigarelli Alfred SPIGARELLI, Director Patent Procedures Management