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“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:
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:
In turn, checking compliance with the conditions specified above includes:
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:
The inventive step corresponds to inventions based on:
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.