How is the inventive step of applications for inventions evaluated?

Keywords: intellectual property, result of intellectual activity, invention, patent, patent registration, execution of an application for a patent, patenting, inventive step

In accordance with the definition set forth in the Civil Code of RF ["The Civil Code of the Russian Federation (Part Four)" No. 230-FL of 18 December 2006 (as amended of 31 December 2014)], an invention is "... a technical solution in any field relating to a product (in particular, to a device, substance, microbial strain, plant or animal cell culture) or to a method (a process of carrying out actions in respect of a material object using material means), including to application of a product or method for a specific purpose."

An invention is granted legal protection, if it is new, has an inventive step and is industrially applicable. The "novelty" of the invention implies that it is not known in the state of the art (the state of the art includes any information that has become publicly available globally prior to the priority date of the invention, all applications filed in the Russian Federation by other persons for issue of patents for inventions, utility models and industrial designs and the inventions, utility models and industrial designs patented in the Russian Federation). An invention has an inventive step, if it does not explicitly follow from the state of the art for a specialist. Finally, "industrial applicability" means the possibility of using an invention in industry, agriculture, health care, and other sectors of the economy or in the social sphere.

In this article, I would like to consider the concept of the "inventive step" of the invention. Most patent specialists agree that the evaluation of the inventive step is the most controversial and difficult issue in the framework of checking the invention for compliance with the conditions of patentability.

The criterion of the "inventive step" is used in the majority of the countries globally, and this condition for the issue of a patent was gradually included in the patent legislation of various countries during the twentieth century. The terminology, however, may differ: the term "non-obviousness" is used for this criterion in the United States. However, in fact, all terms mean the same: evaluation of the inventive step is a definition whether the invention is obvious (or rather non-obvious) to a specialist skilled in a particular art. As we can see, the concepts of a "specialist" and "state of the art" are of particular importance. In different countries, these concepts can be disclosed both in legislation and in other regulatory and legal acts, as well as in guidelines or even in case law. Not surprisingly, all these terms, due to their ambiguity, allow national patent offices to have their own approach to assessing the inventive step when examining applications for a patent.

In theory, several "degrees" of the inventive step are singled out sometimes: thus, a low degree of the inventive step suggests that "... you can get exclusive rights in respect of minor improvements creating a threat to business activity restrictions for third parties." On the contrary, a high degree means that "it may turn out that the inventions that may deserve this will not receive exclusive rights or will receive very limited rights, and this will impede investment and research." [WIPO Regular Committee on the Law of Patents, 19th Session, 25-28 February 2013, "Proposal by the Delegation of Spain for the improvement of understanding of the requirement of the inventive step"].

In the Russian Federation, as is known, in order to obtain a patent, it is necessary to execute an application and submit it to the Federal Service for Intellectual Property - Rospatent. Further, the application passes an examination, and according to its results a decision is made to issue (or refuse to issue) a patent.

The general procedure for obtaining a patent for an invention is set out in the Civil Code, but specific requirements to execution of an application, attached documents, filing an application, procedure for its review and examination are established by a special Administrative Regulation [Order No.327 of the RF Ministry of Education and Science of 29 October 2008 "On the approval of the Administrative Regulation for the execution by the Federal Service for Intellectual Property, Patents and Trademarks of the governmental function for arranging the receipt of applications for an invention and their consideration, examination and issue of patents of the Russian Federation for invention in accordance with the established procedure" (Registered with the RF Ministry of Justice on 20 February 2009, No. 13413)].

Clause 24.5.3 of this regulation provides a detailed procedure for checking the inventive step of the invention. But other clauses, such as clause 10.7.4.3. ("Disclosure of an invention"), have significance for this issue as well, which define the concepts "summary of the invention" ("totality of essential features which is sufficient for achieving the technical result provided by the invention"); "essential features" (features that "influence the possibility of obtaining the technical result, i.e. are in causal connection with the specified result"),"technical result" (the characteristic of the " ... technical effect, phenomenon, property and the like which are objectively appear in implementing the method or in manufacturing or use of the product, including use of the product obtained directly by the method embodying the invention"),"multiclaim formula" (the formula that is used to characterize one invention together with development and/or specification of the totality of its features with reference to particular cases of implementation or use of the invention, or to characterize a group of inventions"), etc.

The regulation also proposes a particular procedure for checking the inventive step of the requested invention. The order is as follows: definition of the closest analog (prototype); identification of the features which make the requested invention characterized in an independent claim different from the closest analogue (distinctive features); identification of solutions from the state of the art (i.e., not only analogs) having the features that coincide with the features of the invention in question, and an analysis of these solutions to determine the knownness of the effect of the distinctive features on the technical result indicated by the applicant.

As explained in the Regulation, the invention follows from the state of the art, i.e. does not meet the criterion of the inventive step, if "... it can be recognized as created by way of combining, modifying or sharing the information contained in the state of the art and/or general knowledge of a specialist."

In addition, the inventive step is not recognized for the types of technical solutions listed in the Regulation, for example, the inventions based "... on supplementing a known means with any known part attached to it according to known rules, if it is confirmed that the effect of such a supplement is known for the technical result achieved" or "on the exclusion of any part of a means (element, action), with the simultaneous exclusion of the related function and, simultaneously, achievement of the usual result for such an exclusion (simplification of design, reduction in mass, dimensions, material consumption, increased reliability, shortening of process duration, etc.).", etc., and this list is not exhaustive.

Ultimately, if during such a check "no solutions having the features coinciding with its distinctive features are identified, or such solutions are identified but the knownness of the effect of these distinctive features on the technical result applied by an applicant is not confirmed", it is recognized that the requested invention has an inventive step. Besides, the Regulation contains an approximate (but not exhaustive) list of technical solutions that meet the criterion of the inventive step (for example, "inventions based on supplementing a known means with any known part, when an unexpected technical result is achieved through such a supplement, which is explained by interconnection of the supplemented part and the known means" or "chemical compound falling within the general structural formula of a group of known compounds, but not described as specially prepared and studied, and wherein showing new properties unknown for this group in qualitative or quantitative terms (selection invention)."

Besides, the Regulation contains provisions on sources of information, the effect of distinctive features on the technical result, etc. It is particularly noted that the decision on the absence of an inventive step shall not be based on the "apparent simplicity".

In order to detail and clarify the provisions of the Regulation, Rospatent also adopted the Guidelines for Examination of Applications for Inventions [Guidelines for Examination of Applications for Inventions, Approved by Order No.87 of Rospatent of 25 July 2011 (as amended by Rospatent orders No. 1 of 10 January 2013 and No. 2 of 14 January 2014)], which contain the detailed notes on guidance on many issues that are divided into three "blocks": the condition of patentability "inventive step" and information sources involved in assessing the compliance of the invention with this condition; principles of verification of the inventive step; examples of assessment of the compliance of the requested inventions with the condition of the inventive step. The Guidelines, for example, note that when determining the state of the art, the data are regarded generally available if they are contained in the information source which can be examined by any person independently or if their content can be legally provided to the person.

The Guidelines also provide other detailed notes of guidance on various aspects of the verification of the inventive step, which do not appear necessary to be given in this article. But some of them may be noted. Thus, the Guidelines show several different approaches that are used in the search for known solutions where the requested invention features distinctive of the prototype are typical of them, depending on the nature of the distinctive features; It is emphasized that the verification of the requested invention characterized in a multiclaim formula with dependent points is conducted with respect to an independent point, and if the invention described in it corresponds to an inventive step, verification of the dependent points is not carried out; that the verification of a group of inventions united by a single inventive concept is carried out with respect to each independent point separately, and much more.

As we can see, the criterion of patentability "inventive step" is another characteristic of the invention evaluation, rather than the criterion of "novelty", and assumes that such an invention is not obvious to a specialist: that is, logically and explicitly, it does not follow from the knowledge such a person can have on the priority date of the invention. To verify the inventive step of the invention is to check how much such an invention is the result and expression of the creative intellectual work that determines the contribution to the state of the art, how different it is from the simple solution that could be created by any person who is not related to this art. Such verification cannot be completely objective, and a subjective element is always present. However, the legislation of the Russian Federation and the regulations of Rospatent set detailed requirements to verification of the inventive step, which makes it possible to organize the legal protection of inventions that really deserve to be called as such. This contributes to the more "global" goals of development of research and investment in science, while this does not create a threat of restricting the commercial activities of third parties.