What is inventive step?

An invention needs to involve an inventive step, meaning that it may not be obvious for a person skilled in the art. Patents in most countries are granted for inventions that are new, involve an inventive step and are susceptible of industrial application.

An inventor claiming exclusive rights is expected by society not merely to combine what he has learned in school, but to use his brains to enrich the art substantially through his problem-solving skills. In patent law, the skilled person is a fictitious person. The possible involvement of any inventive step is to be considered from the perspective of this fictitious person.

Society expects inventors to create inventions that are new globally, instead of merely copying solutions from each other. Note here that, in addition to requiring global novelty, society grants exclusive rights only for the requested geographical area within its jurisdiction – i.e. the territory of a country in typical cases.

Due to the global novelty requirement, the “skilled person” has a passive knowledge of the state of the art within his field of expertise – meaning nothing less than this skilled person knows each and every sentence in the entire corpus of professional literature and in every patent description falling within his field of expertise. Well, this person must be a real “Superman” with a computer drive for a brain. The computer drive metaphor is also correct in the sense that the skilled person does not really have thoughts of his own and has a rather limited combinatory and problem solving skillset. He is capable of performing average and monotonous tasks, but has almost no imagination at all, and is certainly not capable of performing any creative tasks.

 When considering the making of any inventive step, the patent examiner needs to examine the invention with the eyes of the “skilled person”. The examiner examines the invention based on the claims articulated by the patent attorney of the inventor. First, the examiner selects, from the publications revealed during the prior art search, those that are the closest ones to the examined claim. Second, the examiner determines what features of the two solutions are different. Third, the examiner decides whether or not the document forming part of the state of the art would have provided a “skilled person” with sufficient information to implement the invention as of the date of priority. The examiner also needs to consider the combinations of documents revealed during the prior art search, and needs to determine the distance of prior documents from the examined field. A “skilled person” is expected to be able to combine documents falling into the same field of the art, while the combination of more distant documents is a somewhat less than obvious task.

The obviousness of a combination is determined on the basis if it was an obvious to a “skilled person” to solve the task at hand by combining the features of two or more solutions. The invention is deemed to involve an inventive step if the solution is not obvious and the skilled person had to make creative efforts in addition to his expected competences.

Most inventions are the results of combination, including possibly even the steam locomotive, as both the steam engine and the process hauling on a fixed track (cf. horse tram, extracting coal from mines) were known at the time of inventing the steam locomotive. Processes similar to the possibility for a patent examiner to combine various documents may take place in the head of an inventor, who may re-structure already known pieces of information to find new ones. For the purpose of patenting, the relevant question is whether the new piece of information is obvious in the light of the previous pieces or, in other words, if the “skilled person” can be expected to find the given new piece of information based on the prior documents. 

Solutions that cannot be patented

- Addition means the joint application of two or more already applied solutions, where the solutions perform their original functions only and the cumulative effect does not exceed the sum of effects that can be expected from the components. For example, one cannot find any interaction or new effect when combining a thermometer and a pressure sensor to display the temperature and pressure of a selected sample.

- Replacement means that a material used in a known solution is replaced with another – also known – material. In such cases, using the new material will have the very effects a skilled person would expect. Consider, for example, the replacement of steel tent-pegs with aluminium or plastic tent-pins. While this material replacement may have numerous advantages, such as lighter and rust-free new pegs, these features do not exceed the range of effects expected from such a replacement.

The use of an equivalent solution may be also considered as a type of replacement, where a known solution is replaced by another solution performing similar functions. For example, using screws instead of nails to produces pallets will not have any impact other than those expected from such a replacement.

- Transfer, as a form of replacement, means that a solution already used on a given field is implemented on another field. There are known massage armchairs that are used in homes and massage parlours, for massaging various parts of the human body. Seats operating on the very same principles are also used today in motor vehicles. Applying the same technical solution for the same purpose – even under different circumstances – does not satisfy the requirements of involving an inventive step.

- Change in shape and size, multiplication means, for example, the obvious scenario where the size of a device or the volume of power input is increased to increase performance. Fitting a device with a bigger engine will obviously result in a performance boost. Adding extra steps to a ladder means that you can climb higher on it. There is no inventive step involved if you perform a known measure repeatedly and watch the expected effect increase accordingly. A piece of clothing will be naturally drier if you put it in the spin-dryer for a second round. It will also be drier if the spin-dryer runs at a higher speed.

- Optimisation, selection: a “skilled person” is expected to be capable of deriving a new solution by optimising an already known solution, where the parameter varies within an interval according to a known function on the basis of which an extreme can be calculated. For example, the optimal settings for a given cooling process can be determined on the basis of the characteristic curve of a cooler compressor. In the latter case, one solution is selected from among numerous suitable solutions. When looking for a plant containing vitamin C for a medicinal mixture, one may pick aronia, blackcurrants, or rose-hips, for example, and decides to use blackcurrants.

Typical patentable solutions

Examples may be found for all scenarios discussed above that can be patented – meaning that, while quite uncommon, applying the above logics and technologies can result in actually patentable inventions. Find some examples below:

- Unexpected side-effect: The solution may be patented if a side-effect that is unexpected for a skilled person is apparent in the outcome. An inventive step is certainly involved in such a solution and the extra input of the inventor exceeds the expected knowledge of a skilled person.

Using the above examples:

- Development of a pressure meter that can display the temperature on its own, e.g. due to the circumstances of an isochore change of state.

- Replacing a few threads of a sock with silver coated fibre will have the unexpected effect that the foot will not have an unpleasant odour as silver kills off the bacteria responsible for such smells (material replacement).

- Inventing an off-the-peg Velcro with arms similar to those of a thistle (transfer).

- Changing the size of the inlet pipe of combustion engines will cause an unexpected performance and efficiency boost (change of size).

- Selecting a compound from a compound family used for known purposes that generates a medicine with fewer or less severe side-effects (selection).

A synergistic effect is also an unexpected side-effect. A skilled person expects the effects of A + B to be A+B, but the actual effect is more advantageous: (A+B)’. The mutually intensifying effects of two active ingredients is an effect that, when recognised at the time of creating the composition, involves an inventive step. Vitamins C and E have a synergistic effect, meaning that they have a stronger effect when applied together than separately. For example, vitamin E removes the dangerous free radicals from a cell membrane, while vitamin C prevents the chain reaction like production of free radicals. Zinc enhances the antioxidant impact of both vitamins.

- Defeating professional prejudices: An invention certainly involves an inventive step if it defeats a generally shared professional prejudice existing on the day of priority. If this is the case, the inventor has certainly not received any guidance from the state of the art, just the opposite: it may have even led the inventor to a wrong path. For example, the speed of steam locomotives was believed to be unbearable for human beings. Or, a professional prejudice may be defeated by an inventor by producing a piece of glass with a refractive index below 1.44, if it was generally believed that it is impossible to produce glass with a refractive index below 1.44 (glass-air).