Inventive step

Inventive step is a requirement for patentability. Under Article 56 EPC, the question is whether the invention would have been obvious to the person skilled in the art in light of the relevant state of the art. An invention can be new without involving an inventive step.

The problem-solution approach

The EPO uses the problem-solution approach to structure the assessment and reduce hindsight. It involves identifying a suitable starting point in the prior art, determining the objective technical problem in light of the distinguishing features and their technical effects, and assessing whether the claimed solution would have been obvious.

At the final stage, the issue is whether the skilled person would have made the relevant modification in light of the prior-art teaching, rather than whether it was merely technically possible. The EPO Guidelines on the could-would approach explain this distinction. The problem must not be formulated so that it already contains the solution.

The legal test and the way an argument is structured should be considered for the forum concerned. It would be inaccurate to assume that every European court applies the EPO methodology in an identical manner.

Secondary considerations

Commercial success, a long-felt need or unsuccessful earlier attempts may support an inventive-step argument when their relevance to the claimed technical contribution is established. Sales figures alone do not establish inventiveness: marketing, price, distribution and other factors can explain market success.

Likewise, a difference from earlier products is not automatically evidence of a non-obvious technical advance. The analysis must connect the evidence with the claimed features and the knowledge available at the relevant date.

Preparing a validity argument

A reasoned assessment identifies the skilled person, the relevant date, the prior art, the construction of the claims and the alleged technical effect. The evidence should explain why the proposed route to the invention would, or would not, have been obvious without knowledge of the patent.

Inventive step is frequently central to opposition and revocation proceedings. Dhenne Avocats develops and challenges validity arguments in patent litigation before the French courts and the UPC.

Related resources

UPC Litigation Watch · Unified Patent Court

Dhenne Avocats represents clients in patent disputes before the French courts and the UPC. Discuss a dispute with the firm.

This glossary entry provides general information and is not advice on an individual matter.

Going further

Work by Matthieu Dhenne on this notion: A.-C. Chiariny, E. Py and M. Dhenne, Droit des brevets, LexisNexis, 2024.