Problem-solution approach

The problem and solution approach is the method used by the European Patent Office to assess the inventive step of an invention. It is described in the Guidelines for Examination. Its purpose is to objectivise a judgment which, by nature, involves an element of appreciation.

The three steps of the problem and solution approach

First, the examiner identifies the closest prior art. This is the document which shares the most features with the invention and pursues the same purpose. Second, the examiner determines the objective technical problem that the invention solves over that document. The problem is deduced from the distinguishing features and their technical effect. Third, the examiner asks whether the person skilled in the art, faced with that problem, would have been led to the claimed solution by the teaching of the state of the art.

The could versus would test

The question is not whether the skilled person could have arrived at the invention, but whether the skilled person would have done so with a reasonable expectation of success. That distinction is the heart of the method. A combination of documents which the skilled person had no reason to make does not render the invention obvious. A clear incentive in the prior art, by contrast, suffices.

Reception by the courts

The French courts are not bound by the problem and solution approach. The Paris Judicial Court and the Court of Appeal nevertheless use it frequently as an analytical framework. The Unified Patent Court likewise uses it without making it a mandatory route. A validity argument must therefore be built to withstand the method, while showing that other approaches lead to the same result.

The firm argues patent validity before the French courts, the Unified Patent Court and in opposition before the European Patent Office. See our page patent nullity action and the Guidelines for Examination of the European Patent Office.