Granting a patent – the inventive step

Granting a patent – the inventive step

05 November 2019 - Marcin But

In addition to novelty and industrial application, the inventive step is one of the criteria of assessing inventions. To answer the question of whether an invention involves an inventive step we must determine if the subject of the invention is new.

In order to adapt to European standards, the Polish Industrial Property Law recently introduced the phrase ‘inventive step’ in place of the previously used ‘non-obviousness.’

What does “inventive level” mean?

When assessing the inventive step, for each solution presented in the patent claims, the Polish Patent Office will assess whether, prior to the filing date and taking into account the state of the art at that time, an average person skilled in the art would be able to invent the solutions presented in the claim. If that is found to be the case, the solution is declared to be obvious, i.e. it lacks the inventive step.

In such a case, the solution is considered by the average person skilled in the art to be a clear and logical consequence of the state of the art. This means that its implementation does not go beyond ordinary technological progress, i.e. it does not require any additional creativity, skill or knowledge which exceed those of the average person skilled in the art.

Average person skilled in the art

I should now explain who the ‘average person skilled in the art’ actually is. It is a person who has average skill in a given technological area and awareness of what the state of knowledge in the relevant technological area was at the date of filing the application. The assessment of patentability or the inventive step is therefore based on the skills and competences of the expert.

The claim of no inventive step made by the expert of the Patent Office is usually based on two documents, or the expert’s general knowledge of the relevant technological area. The invention must be considered as a whole. When the claim contains a combination of features, then the opposing document against the inventive step should contain a corresponding combination of technological features. It is forbidden to try to prove that each feature in the combination is known and obvious, as this would mean that the invention as a whole results directly from the official state of the art and as such is obvious.

Inventive level assessment procedure

The provisions of the Industrial Property Law do not specify what ‘tools’ should be used to assess the inventive step. The assessment of the inventive step often involves the ‘problem-solution approach’, which consists of the following:

  • Finding the nearest state of the art. The nearest state of the art is usually considered to be a document or documents showing a combination of technological means sharing most of its features with the patent application, in terms of technological means, its goal or application, i.e. the ones closest to the submitted invention.
  • Specifying the problem that needs to be resolved. At this stage it is important to determine what technological problem the submitted solution aims to resolve. What needs to be done now is to examine the nearest state of the art and compare particular features. Irrelevant features should be ignored. The technological problem may consist in improving a result of previously known state of the art, but it may also involve achieving a completely new effect.
  • Considering whether a person skilled in the nearest state of the art, while deliberating the technological problem that the invention intends to solve, would be able to professionally, routinely and without creative efforts arrive at the same solution as the invention claims to offer. Bearing in mind the technological problem, one would need to consider whether a technological expert faced with it would be able to make modifications or adaptations to the nearest state of the art by drawing conclusions from the existing state of the art, and thereby achieve the same results as the invention. If so, then the invention is a direct result of the state of the art, i.e. it involves no inventive step. If not, however, then the invention is considered to involve an inventive step. The above condition does not pertain to the question whether the expert could be led to achieve the solution but whether he or she could – without applying additional inventiveness – arrive at the same combination of known technological means in order to solve the problem.

 Conditions for the inventive step include in particular:

  • surprising a person skilled in the relevant technological area,
  • a solution to a problem tackled unsuccessfully by experts in the field,
  • satisfying a long-recognized social need,
  • a marked improvement in efficiency (commercial success),
  • challenging existing technical bias (misconceptions),
  • an unexpected and surprising effect.

The inventive step is one of the most difficult conditions for assessing an invention. Due to its nature, it revolves around interpreting two opposing documents which go against non-obviousness (the inventive step) of the solution, which may differ between the parties, i.e. the Polish Patent Office’s expert and the patent attorney (the applicant’s representative). However, the goal remains the same – to find the ‘golden mean’ which brings agreement and leads to granting a patent.

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