How to assess an inventive step?

“Inventive step” is one of the criteria for the patentability of an invention. In the process of processing an application for an invention, Rospatent carries out a substantive examination of the application, which includes, in addition to checking the claimed technical solution for the conditions of patentability “industrial applicability” and world “novelty”, checking compliance with the “inventive step”. If everything is clear with the first two criteria, then disputes often arise with regard to the “inventive step”, since this criterion is quite subjective.

In the EAPO, for example, according to Rule 47(2) of the Instructions, “when checking the compliance of the claimed invention with the patentability condition “inventive step”, it is determined whether the claimed invention is obvious to a specialist based on the prior art.”

Article 56 of the European Patent Convention, in turn, interprets this criterion as “an invention is recognized as having an inventive step if, taking into account the state of the art, it is not obvious to a person skilled in the field.”

In Rospatent, in accordance with the Rules for the preparation, submission and consideration of documents that are the basis for carrying out legally significant actions for the state registration of inventions, “an invention is recognized as having an inventive step if it is established that for a specialist it does not clearly follow from the state of the art.” In this case, the level of technology for an invention includes any information that became publicly available in the world before the priority date of the invention.

Thus, the phrase “explicitly” used in Russian regulatory documentation is a replacement for the word “obvious” used by the EAPO and the EPO. However, in practice, what may be obvious to one person may not be so obvious to another. In this regard, applicants often ask the following question: what methodology is used to determine whether a particular invention meets the patentability requirement of "inventive step"?

First, let's try to understand the concept of “obviousness”. After all, it is quite commonly used, and according to dictionaries, it means:

• indisputability, irrefutability of something for someone (Wiktionary);
• what is accessible to direct observation, what can be seen with one’s own eyes (Efremova’s Explanatory Dictionary. T. F. Efremova. 2000);
• visibility, explainability, frankness, unconcealability , noticeability, intelligibility, recognition, indisputability, transparency, unconditionality, clarity, self-evidence, visibility, certainty, clarity, obviousness, fidelity, undisguisedness, reality (Dictionary of synonyms of the Russian language. Practical reference book. - M. : Russian language. Z. E. Aleksandrova. 2011);
• assessment of any situation, someone’s actions as being clear, understandable, and beyond doubt (Explanatory Dictionary of the Russian Language, edited by T.F. Efremova);
• the property of a clear and definite idea. The obviousness of an idea naturally entails its approval (Eurasian wisdom from A to Z. Explanatory Dictionary. - Almaty: Sozdik -Dictionary. V.I. Zorin. 2002).

Summarizing each of the above definitions, we can conclude that “obviousness” tells us about the clarity and transparency of the idea, that the solution lies on the surface and can be implemented without much difficulty.

However, in Russian legislation there are a number of requirements in order to recognize an invention as “obvious”. It is not enough just the opinion of an expert who is essentially a specialist in this field of technology; the absence of an “inventive step” must be justified, i.e. identify during an international patent information search and contrast information sources published before the application filing date (priority date), which together will reveal all the features of the claimed technical solution.

The modern Rules today clearly formulate which inventions clearly follow from the state of the art:

• if it can be recognized as created by combining, changing or sharing information contained in the prior art and (or) general knowledge of a specialist;
• if solutions are identified that have features that coincide with the features by which the claimed invention, characterized in the independent claim of the invention, differs from the closest analogue (distinctive features), and the knowledge of the influence of these distinctive features on the technical result specified by the applicant is confirmed.

In turn, checking compliance with the conditions specified above includes:

1. determination of the closest analogue of the invention;
2. identification of features by which the claimed invention, described in the independent claim of the formula, differs from the closest analogue (distinctive features);
3. identification from the prior art of solutions that have features that coincide with the distinctive features of the claimed invention;
4. analysis of the state of the art in order to confirm the known influence of features that coincide with the distinctive features of the claimed invention on the technical result specified by the applicant.

In this case, the invention is recognized as not clearly following the prior art for a specialist if during the inspection no solutions are identified that have features that coincide with its distinctive features, or such solutions are identified, but the knowledge of the influence of these distinctive features on the technical result specified by the applicant is not confirmed.

In particular, the following inventions do not meet the criteria for the "inventive step" aspect of the invention:

1. based on supplementing a known means with any known part, attached to it according to known rules, if the knowledge of the influence of such an addition on the achieved technical result is confirmed;
2. replacing any part of a known means with another known part, if the knowledge of the influence of the replacement part on the achieved technical result is confirmed;
3. based on the exclusion of any part of the means (element, action) with the simultaneous exclusion of the function due to its presence and the achievement of the usual result for such exclusion (for example, simplifying the design, reducing weight, dimensions, material consumption, increasing reliability, reducing the duration of the process);
4. increasing the number of similar elements and actions to enhance the technical result due to the presence of just such elements and actions in the product;
5. based on the implementation of a known means or part thereof from a known material to achieve a technical result due to the known properties of this material;
6. based on the creation of a tool consisting of known parts, the choice of which and the connection between them are carried out on the basis of known rules and recommendations, and the technical result achieved in this case is determined only by the known properties of the parts of this tool and the connections between them;
7. based on the selection of optimal or operating values of parameters, if the knowledge of the influence of these parameters on the technical result is confirmed, and the choice can be made by the usual trial and error method or by using conventional technological methods or design methods;
8. based on the use of a product for a specific purpose, if the new purpose of a product known from the prior art is due to its known properties, structure, performance and it is known that precisely such properties, structure, performance are necessary for the implementation of this purpose;
9. based on changing a quantitative characteristic or characteristics, presenting such characteristics in a relationship or changing the type of relationship, if the fact of the influence of each of them on the technical result is known and new values of these characteristics or their relationship could be obtained based on known dependencies and patterns;
10. based on the creation of a chemical compound that is a form of a known chemical compound (in particular, an isomer, stereoisomer, enantiomer, amorphous or crystalline form) or a derivative thereof (in particular, a salt, solvate, hydrate, complex compound or ester), if such compound does not exhibit new properties in comparison with the known compound in qualitative or quantitative terms, which are not obvious to a specialist from the prior art.

The inventive step corresponds to inventions based on:

1. on supplementing a known means with any known part, when achieving a technical result unexpected for such an addition, due to the relationship of the complemented part and the known means;
2. methods for obtaining new chemical compounds (class, group) with an established structure, if these compounds meet the conditions of inventive step;
3. methods for obtaining known chemical compounds (class, group) with an established structure, if they are based on a reaction that is new for a given class or group of compounds or on a reaction known for a given class or group of compounds, the conditions for which are unknown, and they lead to an unexpected technical result when implementing the method;
4. a composition consisting of at least two known ingredients, providing a synergistic effect, the possibility of achieving which does not arise from the prior art;
5. a chemical compound that falls under the general structural formula of a group of known compounds, but is not described as specially obtained and studied and at the same time exhibits new properties unknown for this group in a qualitative or quantitative sense (selective invention);
6. if, due to the apparent simplicity of the invention and the disclosure in the application materials of the mechanism for achieving a technical result, such disclosure became known not from the prior art, but only from the application materials.

In the case of inventions, the concept of “state of the art” is used not only to characterize the condition of patentability “novelty”, but also to characterize the condition of patentability “inventive step”. In accordance with paragraph 41 of the Requirements that came into force on April 29, 2023, “In the section of the description of the invention “State of the art”, information from the previous level of technology is provided, including descriptions of analogues known to the applicant - solutions that have a purpose that coincides with the purpose of the invention, highlighting analogue, which is characterized by a set of features that is closest to the set of essential features of the invention (prototype).”

It is worth considering that legal protection as inventions is subject to not only those solutions that completely coincide with those described in the independent clause, but also those solutions, the difference of which, for example, is the replacement of features with their equivalents.

In this case, the essence of equivalent features can be disclosed in published sources relating in general to a solution for a different purpose, but in this case a specific distinctive part will have the same individual functional purpose as the one that was replaced.

Let us give a similar example of a technical solution that clearly will not meet the “inventive step” patentability condition. The applicant defends as an invention a chest with a lock used to close a plastic window. In this case, the expert has the right to counter the non-compliance of the technical solution proposed by the applicant with the patentability condition of “inventive step” with a combination of two published sources of information: the first is an opening chest of the same design for the same purpose (intended for storing objects), the second is a revealing source describing the window design (designed to fill the room with light, while simultaneously providing the opportunity to view the outside space), which contains an identical lock part (in both cases it is intended for fixing and locking), i.e. has an equivalent individual functional purpose of the part, while possessing characteristics that coincide in the function performed and the result achieved).

Thus, in this case, both sources, despite the different purposes of the objects in general, will be included in the “state of the art” for this technical solution, and the expert can rightfully include them in the search report marked “Y”, as a document that has the closest relationship to the subject of the search; and conclude that the claimed invention does not involve an inventive step when the document is taken in combination with one or more documents of the same category, and such combination of documents is obvious to a person skilled in the art.