INTRODUCTION
“Inventive Step” is one of the main elements in assessing the patentability of an invention around the globe. Under the Indian Patent Act of 1970, Section 2 (ja) defines “inventive step”. It means a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art. Therefore, for an invention to be patented, it must involve an inventive step. For assessing inventive steps or non-obviousness, various approaches have been developed within different jurisdictions. In this article, we will look into one of the approaches called the problem-solving approach. It is commonly used for assessing inventive steps by the European Patent Office (EPO).
PROBLEM SOLUTION APPROACH
The EPO’s Guidelines for Examination (EPC Guidelines) outline the procedures and practices for examining European patent applications and patents. These guidelines are based on the European Patent Convention and its Implementing Regulations. The guidelines are categorized into eight (8) parts, covering every part of the patent process. The approach is elaborated in part G chapter VII of the EPC guidelines. It states that in order to assess inventive steps objectively and predictably, the so-called “problem-solution approach” is applied.
In the problem-solution approach, there are three main stages:
- Determining the “closest prior art”,
- Establishing the “objective technical problem” to be solved, and
- Considering whether or not the claimed invention, starting from the closest prior art and the objective technical problem, would have been obvious to the skilled person.
- Closest prior art – the closest prior art is the starting point for assessing inventive steps. It can be a whole document or just one embodiment of a document. Field, purpose, and structure are the main criteria for selecting it. If multiple valid documents exist, the approach may need to be applied to each one. The closest prior art should be assessed from the skilled person’s point of view on the day before the filing date, based on what the applicant acknowledges as known unless stated otherwise. Other factors to consider include whether the document suggests that any of the features in the claim are not useful, or if it already hints at the problem the invention solves. Additionally, it’s important to think about which piece of prior art is easiest to explain in the context of the invention.
- Objective technical problem – once the closest prior art is identified, there are three steps to follow. These steps are sometimes considered together as one process. They are:
- Finding the distinguishing features – the distinguishing features compared to the closest prior art can be either structural or functional.
- Defining the technical effect to those features – the technical effect must directly result from the distinguishable features, showing that feature X causes effect Y. Sometimes the effect is obvious, like a simpler process being more efficient. However, evidence is often needed to prove the effect. Comparative evidence, such as comparing products with and without feature X, is the most persuasive, especially in opposition or appeal proceedings. While prior art is not fully known at filing, it’s helpful to include as much evidence as possible. This evidence should isolate individual features to demonstrate their effects and show that effect across the claims. Even if the technical effect isn’t fully demonstrated in the application, it can still be considered. Additional evidence may be provided later to support the effect if it can be inferred from the original filing.
- Determining the objective technical problem solved – the problem doesn’t have to be related to the aims mentioned in the Background section of the application. It is formulated based on the prior art cited by the Examiner or opponent. The objective technical problem is often stated as “how to obtain [the technical effect]”. Although it’s hard to predict which prior art will be cited, drafters should consider including information about the technical effects of key features in the application as filed.
- The final question: is the solution obvious? – Once the problem is defined, we ask if the solution is obvious.
- First: Is the solution obvious when compared to the closest prior art, considering the general knowledge of someone skilled in the field?
- Next: Is the solution obvious when the closest prior art is combined with other cited documents?
We also consider if the disclosures are structurally or functionally incompatible. Additionally, we look at whether the other document is from a completely different field teaches a different solution, or even discourages the claimed solution.
POSITION IN INDIA
Examiners in India favour this approach because it makes it easier to understand and recognize the technical contribution of an invention compared to existing art. Whether it’s a new pharmaceutical or device improving healthcare, or a technique enhancing lab experiments, identifying a problem and offering a technical solution helps highlight the invention’s advancement. This approach allows examiners to effectively and simply define the invention’s merit over existing art.
In Avery Dennison Corp. v. Controller of Patents and Designs, the court while deciding on the test for inventive step, recognized the various approaches and tests developed in different jurisdictions. Here are the approaches mentioned in the judgement.
- Obvious to try approach – this approach involves analysing whether, based on the teaching or solutions in the prior art, it was obvious to attempt to develop the subject invention.
- Problem/Solution approach – this approach examines whether, considering the closest prior art and the technical problem, the solution to the invention would be obvious to a skilled person. If the skilled person can easily identify the claimed solution, the subject matter is considered obvious.
- Could-Would approach – in this approach, the question is whether the prior art as a whole would have prompted a skilled person, with knowledge of the technical problem, to modify or adapt the closest prior art to arrive at the claimed invention, rather than just potentially doing so.
- Teaching Suggestion Motivation (TSM Test) – this test originated in the USA, where if a skilled person can modify or combine prior art references to arrive at the claimed invention based on Teaching, Suggestion, or Motivation from the prior art, then the claimed subject matter is considered obvious.
The approaches aim to guide the analysis of prior art and assess a patent application’s inventive step. However, these approaches should not be applied rigidly. Each patent application may require different approaches or tests, depending on the field of technology and the nature of the prior art.
In Cipla Ltd. v. F. Hoffmann-La Roche Ltd. & Anr, the court recognized the problem-solution approach. The steps mentioned in the ruling are as under:
- Identifying the closest prior art,
- Assessing the technical results (or effects) achieved by the claimed invention when compared with the closest state-of-the-art established,
- Defining the technical problem to be solved as the object of the invention to achieve these results, and
- Examining whether or not a skilled person starts from the closest prior art.
In Biswanath Prasad Radhey Shyam v. Hindustan Metal Industries, the court held that Patent law aims to promote scientific research, technology, and industrial progress by granting exclusive rights to inventors for a limited time, encouraging new inventions with commercial value. The patent’s validity depends on its novelty and usefulness, requiring that it be a new and original discovery, not just a confirmation of prior knowledge. After the patent expires, the invention enters the public domain. Further, for an invention to be patentable, an improvement or combination of known elements must be more than just a minor change. It must involve an inventive step. The improvement must lead to a new result, a new product, or a better or cheaper version of an existing one. Simply putting together known elements without any inventive contribution does not qualify for a patent.
CONCLUSION
The inventive step is a cornerstone of patentability, ensuring that an invention demonstrates technical advancement, economic significance, or both, in comparison to prior art. The problem-solving approach, widely used by the European Patent Office and acknowledged by Indian courts, offers a structured method for assessing inventive steps. By identifying the closest prior art, defining the objective technical problem, and determining whether the solution is obvious, this approach allows for a clear and objective evaluation of an invention’s merit. Indian jurisprudence, including cases like Avery Dennison Corp. and Cipla Ltd. v. Hoffmann-La Roche, underscores the importance of analysing inventive steps using various approaches, tailored to the field of technology and the nature of prior art. Ultimately, these assessments align with the broader goal of patent law—to foster innovation and industrial progress while balancing the public interest.
AUTHOR – Dixit PARAKH
SOURCES
- Guidelines for Examination in the European Patent Office, March 2024.
- Part 1&2: Inventive step at the EPO by Anne-Marie Conn.
- The Problem and Solution Approach – Basic Case Law and Recent Development (I) by M. M. Fischer (DE), European Patent Attorney.
- A Review of the “Problem and Solution” Approach to Inventive Step under Article 56 EPC by A. Kennington.
- Assessing Obviousness at the EPO Using the Problem-Solution Approach by Daniel Mannion, Keltie LLP.
- The problem-solution approach in determining inventive step by Kathy Wasström.
- Requirements for inventive steps in India along with common patent eligibility issues in Life Science and Pharma patents.
- Avery Dennison Corp. v. Controller of Patents and Designs (C.A. (COMM.IPD-PAT)) 29/2021.
- Cipla Ltd. vs F. Hoffmann-La Roche Ltd. & Anr. RFA (OS) 92/2012 & 103/2012.
- Biswanath Prasad Radhey Shyam v. Hindustan Metal Industries (AIR 1982 SC 1444).
