Comparative Analysis of Inventive Step/Nonobviousness
Standard and Case Study Thereof – from the Aspect of“the Problem to Be Solved” (*)
Invited Researcher: CHOU, Chih-Hao (**)
Although the concept of invention originated in the 16th century, there are still significant differences inthe standards of inventive step for patentability among different countries because of policies, laws andregulations, assessment, etc. nowadays. This report studies and analyzes the standard for the inventive step of
the European Patent Office (hereinafter referred to as “EPO”), United States Patent and Trademark Office(hereinafter referred to as “USPTO”), Japan Patent Office (hereinafter referred to as “JPO”) and Taiwan
Intellectual Property Office (hereinafter referred to as “TIPO”). It will also discuss the similarities anddifferences between said offices step by step from the perspective of definitions of the inventive step andapplicable laws, the scope of prior art, the level of a person skilled in the art, assessment of the inventive step,etc. Owing to the fact that, while assessing the inventive step, “the problem to be solved by the claimed
invention” can usually provide objectively logical articulation concerning the rationale to combine the different
teachings of prior art, this research will try to analyze the assessment of inventive step from the aspect of “theproblem to be solved” and illustrates the differences among the above offices via some representative casestudies.
When determining the existence of the inventive step, for all the four IP Offices, it is necessary to conduct
reasonable articulation on whether or not a claimed invention is obvious from the view point of a person skilledin the art based on the prior art and they also emphasize the importance of “the problem to be solved.”
However, the approaches for assessment among different IP Offices are different and can be categorized into
the “problem and solution approach,” which is adopted mainly by the EPO and combines different prior arts byan objective technical problem, and into the “general rationale articulation,” which is adopted mainly by the
USPTO, JPO, TIPO, etc. and combine different prior arts by articulating rationales from various and broad
points of view. In addition, from the aspect of using “the problem to be solved” to analyze the inventive step
determination approaches adopted by the four IP Offices, there exists three major differences including “theway to define the problem”, “features taken into account for the solution of the problem”, “technical characterof the problem and solution”, etc.; and these differences can be relevant to the “level of a person skilled in theart.” When trying to harmonize the standards of the inventive step from the aspect of “the problem to besolved”, these three differences, as well as the level of a person skilled in the art, should be taken into
consideration and be harmonized gradually from the easiest to the most complicated in the hope that a morepractical and objective inventive step standard can be obtained.

I

Introduction

Although the concept of invention originated in the
16th century,1 there are still significant differences in thestandards of inventive step for patentability among
different countries because of policies, laws andregulations, assessment, etc. nowadays.2 Recently, basedon the trend towards globalization, countries around theworld are making efforts to achieve international
harmonization in the patent system, and harmonization in
the standard of the inventive step is one of the goals to beachieved. For example, when the draft of the Substantive
Patent Law Treaty, (Draft SPLT) was established among

contracting states of the World Intellectual Property
Organization (hereinafter referred to as “WIPO”),3 there
were discussions about whether to include the inventive
step as one of the requirements for patent harmonization.
In addition, the World Trade Organization (hereinafterreferred to as “WTO”) 4 states that “patents shall beavailable for any inventions, whether products orprocesses, in all fields of technology, provided that they
are new, involve an inventive step and are capable ofindustrial application” in its Agreement on Trade-Related
Aspects of Intellectual Property Rights (hereinafterreferred to as “TRIPs”)5
And therefore, it is obvious that the inventive step is(*) This is a summary of the report published under the 2014FY Industrial Property Research Promotion Project (2014FY-2016FY)
Entrusted by the Japan Patent Office.
(**) Patent Examiner, Taiwan Intellectual Property Office, at our institute over a period of approximately 6 months from September 24, 2015
through March 19, 2016, as an Invited Researcher for the Fiscal Year 2015.
●

IIP Bulletin 2016 Vol.25

1 ●one of the basic requirements to obtain patent protection
and the standards for the inventive step have a significant
impact on patentability.
This report studies and analyzes the standard for theinventive step of the European Patent Office (hereinafterreferred to as “EPO”), United States Patent andTrademark Office (hereinafter referred to as “USPTO”),
Japan Patent Office (hereinafter referred to as “JPO”) andTaiwan Intellectual Property Office (hereinafter referred
to as “TIPO”). It will also discuss the similarities anddifferences between said offices step by step from theperspective of definitions of the inventive step andapplicable laws, the scope of prior art, the level of aperson skilled in the art, assessment of the inventive step,etc. Owing to the fact that, while assessing the inventive
step, “the problem to be solved by the claimed invention”
can usually provide objectively logical articulation
concerning the rationale to combine the different
teachings of prior art, this research will try to analyze theassessment of inventive step from the aspect of “theproblem to be solved” and illustrates the differencesamong the above offices via some representative casestudies.
As a result of this research, it was found that whileassessing the inventive step, from the aspect of “theproblem to be solved”, there are three major differences
between the “problem and solution approach”, adopted
by the EPO, and the “general rationale articulation”,
adopted by the USPTO, JPO, TIPO, and others; they
include “the way to define the problem”, “features taken
into account for the solution of the problem”, and “thetechnical character of the problem and solution”, etc.
When trying to achieve international harmonization of thestandards of the inventive step from the aspect of “theproblem to be solved”, these three differences should betaken into consideration and be harmonized graduallyfrom the easiest to the most complicated in the hope that amore practical and objective inventive step standard canbe obtained.

II Definition of the Inventive Step andthe Applicable Law
With respect to the provisions of the EPO related toinnovation, the main reference is Article 56 of theEuropean Patent Convention (EPC Art. 56)6, with respect
to the provisions of the USPTO related to the inventive
step, the main reference is the relevant provisions of 35
USC § 1037, With respect to the provisions of the JPO on
inventive steps, the main reference is the provisions ofArticle 29 (2) of the Japan Patent Act8, and With respect
to the provisions of the TIPO related to inventive steps,
the main reference is the provisions of Article 22 (2) of
the Republic of China Patent Law9. As shown in theabove paragraphs, although terms are somewhat different●

among different IP Offices, principally, all of them fulfill
the minimum requirements related to patent protection
under TRIPS in and have some things in common.10 (1)An inventive step is a relative concept. When assessing
the inventive steps of an invention, it must be comparedwith prior art before the patent application date (or before
the effective filing date). (2) The subject who judges theinventive steps is a person skilled in the art (or a person
who has normal knowledge in the field of technology towhich the invention belongs). (3) While emphasizing thedifferences between the claimed invention and prior art,
the inventive step should be determined based on whether
or not “the claimed invention as a whole” is obvious or
may easily be completed by a person skilled in the art.
These match the concepts of the Draft Substantive
Patent Law Treaty, Article 18 [Alternative A] 11that wasestablished by the Standing Committee on the Law ofPatents of WIPO. 12 As it is apparent in the
aforementioned, definitions and provisions of laws
related to inventive steps have already been harmonizedconsiderably because countries are making an effort
towards international harmonization; and these conditions
correspond to the trends proposed by the Summary
Report 13 of the Association Internationale pour laProtection de la Propriété Intellectuelle (AIPPI) on “thepatentability standards of inventive step/non-obviousness.”

III Scope of Prior Art
With respect to provisions of the EPO related toprior art, the main reference is Article 54 of the EPC. In
other words, (1) an invention shall be considered to be
new if it does not form part of the state of the art.14 (2)The state of the art shall be held to comprise everything
made available to the public by means of a written or oral
description, by use, or in any other way, before the date offiling of the European patent application. 15 (3)Additionally, the content of European patent applications
as filed, the dates of filing of which are prior to the datereferred to in paragraph 2 and which were published on
or after that date, shall be considered as comprised in theprior art.16 However, judgment of the inventive step does
not apply to the state of the art (or secret prior art orconflicting application17).18 In principle, the definition of
the “prior art” is broad; 19 there are no restrictions
whatever as to the geographical location or the language
or manner in which the relevant information was madeavailable to the public; and also no age limit is stipulated
for the documents or other sources of the information.
Moreover, the state of the art does not include provisions
on the non-prejudicial disclosures or grace period20 set
forth in EPC Article 55 (1). Non-prejudicial disclosures
include the following two specific cases within six
months 21 prior to the date of filling a patent application:(A) evident abuse in relation to the applicant or his/her
2 ●IIP Bulletin 2016 Vol.25

legal predecessor, such as where there is an act where theinvention in question is taken from the applicant anddisclosed, that is against intention of the applicant (“anevident abuse” is established only if the person who
disclosed the invention has the true intention to cause
harm to the applicant, or if the person who disclosed theinvention knows surely or concretely that the disclosure
causes or is likely to cause harm after the disclosure); (B)the fact that the applicant or his/her legal predecessor has
displayed the invention at an official, or officiallyrecognized, international exhibition as indicated in EPC
Art. 55 (1) (b).
With respect to the provisions of the USPTO related
to prior art, the main reference is the relevant provisions,
including (1) and (2) of the current 35 USC § 10222 (a).
According to the regulations, in the United States, prior
art includes all inventions that are disclosed before theeffective filing date of the claimed invention and secretprior art for which the filing was made before theeffective filling date of the claimed invention anddisclosure or public notice was made after the effective
filing date, and the region and language are not limited inprinciple.23 In addition, the current 35 USC § 103 does
not exclude 35 USC Art. 102 (a) (2) with respect to thepart related to the inventive step (non-obvious subject
matter). Therefore, in the United States, secret prior art isgrounds for judging the existence of the inventive stepwith the claimed invention and this is clearly different
from the way treated by the EPO. In addition, 35 USC
Art, 102 (a), including (1) and (2), are exceptions
concerning prior art; therefore, in the United States,
applicants who disclose the invention first (before theeffective filing date of the invention) may obtain an
absolute, one-year grace period. The disclosure related tothe claimed invention during the grace period does not
only constitute a prior art that hinders the applicant who
discloses the invention first from obtaining a patent andthis disclosure also can prevent (other) disclosures byother persons during the grace period from forming aprior art that hinders the applicant who discloses theinvention first from obtaining a patent. Furthermore, if
this absolute grace period and right of priority are claimed
together, the disclosure made by the applicant who
discloses the invention first, enjoys the period calculatedby dating back for two years from the effective filing date
at a maximum and excludes that (other) disclosures madeby another person constitute a prior art that hinders theapplicant who disclosed the invention first from obtaining
a patent. The way the United States treats this part isapparently different from those in other countries and it is
one of the characteristics24 of the First-inventor-to-filesystem in the U.S. patent system.
With respect to the provisions of JPO related to priorart, the main reference will be to the relevant provisionsof Article 29 (1) of the Japan Patent Act. In principle, the●

IIP Bulletin 2016 Vol.25

geographical location and language of prior art are notlimited.25 The JPO treats the parts related to conflicting
applications (secret prior art) in a similar way to the EPO.
It means that if an invention pertaining to a patentapplication is identical to another application that is filed
before filing an application for the patent in question andthat is published or its filing is announced in the Patent
Gazette indicating the matters listed in the items of
Article 66 (3) of the Japan Patent Act pursuant to theprovisions of said paragraph or published in the Utility
Model Gazette indicating the matters listed in items of
Article 14 (3) of the Utility Model Act (Act No. 123 of
1959), or is identical to an invention or a device(excluding an invention or device in cases where theperson who made the invention or device is identical tothe inventor of the invention of said patent) indicated in astatement attached first to an application of utility model,
scope of patent claim, scope of utility model registration
claim, or drawing (in cases of an application in a foreign
language set forth in Article 36-2 (2), the foreign
language document), the invention cannot obtain a patent
regardless of the provisions of Article 29 (1) of the Japan
Patent Act. However, if the applicant and an applicant of
said other application or utility model registration are
identical at the time of said application for the patent, theaforementioned provision26 does not apply. It should be
noted that secret prior art applies only to the examinationof novelty and should not be used for judgment of theinventive step. 27 In addition, based on the relevant
provisions of Article 30 of the Japan Patent Act, if aninvention for which a patent is filed in Japan corresponds
to the specific circumstances specified in the provisionsof this Act, an applicant for a patent invention may haveat most a six-month grace period.
With respect to the provisions of the TIPO related toprior art, the main reference will be the relevant
provisions of Article 22 (1) of the ROC Patent Law.28 In
principle, geographical location and language are notlimited.29 In addition, the part related to a conflicting
application (secret prior art) is called a loss of fictitious
novelty in Taiwan and the treatment is similar to that of
the JPO. The secret prior art applies only to examinationof novelty and should not be used for judgment of theinventive step.30 Furthermore, if the invention pertaining
to the filing corresponds to the requirements specified by
Article 22 (3) of the ROC Patent Law, the publication oftechnology, an applicant for a patent for an invention may
have a grace period of six months at maximum.
Summarizing the abovementioned items, for thefour IP Offices, the scope of prior art are almost the sameand have at least the following common concept: (1) prior
art includes those inventions that have been indicated inany printed publication prior to filing, those that havebeen practiced publicly prior to filing, and those that havebeen publicly known prior to filing; (2) in principle, the
3 ●region and language that become open are not limited;and (3) the grace period of secret prior art and novelty
applies. There are also some differences that exist (1)regarding approval of the grace period for novelty and (2)whether secret prior art is used to disturb the inventive
step of the claimed invention. These two parts involve
differences in practices and concepts of government
policy, etc. of each country and need further
harmonization.

IV Level of a Person Skilled in the Art
When discussing the standard for the inventive step,
it is necessary to understand the definition of a person
skilled in the art and level of state of the art. This isbecause a person skilled in the art is the subject31 who
determines the patentability of the claimed invention. If
the definition and criteria for the level of the skill aredifferent, it may have great impact on the assessment of
inventive steps. The term “a person skilled in the art” isnot expressed in the same way in different IP Offices.32
In order to avoid confusion, it is regularly referred to as“a person skilled in the art” hereinafter.
First, this report will explain the definition of aperson skilled in the art used by the EPO. According to
the EPO Examination Guidelines,33 the "person skilled in
the art" should be presumed to be a hypothetical person
who is a skilled practitioner in the relevant field oftechnology who is possessed of average knowledge andability and is aware of what was common generalknowledge in the art at the relevant date. The person
skilled in the art should also be assumed to have hadaccess to all information regarding the "state of the art":in particular the documents cited in the search report, andto have had at his disposal the means and capacity forroutine work and experimentation which are normal forthe field of technology in question. If the (objective andtechnical) problem prompts the person skilled in the art toseek its solution in another technical field, the specialist inthat field is the person qualified to solve the problem. The
skilled person is involved in constant development in his
technical field and he/she may be expected to look forsuggestions in neighboring and general technical fields34
or even in remote technical fields, if prompted to do so.
Assessment of whether the solution involves an inventive
step must therefore be based on that specialist's
knowledge and ability and there may be instances where
it is more appropriate to think in terms of a group of
persons, e.g. a research or production team, rather than asingle person. If an invention pertaining to an application
relates to creation in both a field of technology and a
non-technical field, a person skilled in the art is anexpert35 in the field of technology with knowledge of the
non-technical field and only solves problems related tothe technical aspect. Therefore, when assessing an●

inventive step of a claimed invention, one only considers
features making contribution to the solution of technicalproblems (hereinafter referred to as “features making
technical contribution”). In other words, we do not haveto consider “features making no contribution to thetechnical character of the claimed invention” (hereinafterreferred to as “non-technical features as such”).36 What
we must note is the following point. The person skilled in
the art is assumed to have had at his or her disposal themeans and capacity for routine work and experimentation
which are normal for the field of technology in question;
however, he/she is not recognized to have any creative
abilities in practice. 37 This is the major difference
between a person skilled in the art and an inventor.
The definition of a “person skilled in the art” by the
USPTO 38 is the same as the definition by the EPO.
However, “the inferences and creative steps that a personof ordinary skill in the art would employ” should also be
noted. The Supreme Court emphasized in its decision of
the KSR case39 that “a person skilled in the art is also a
person of ordinary creativity, not an automaton.” In manycases, a person of ordinary skill will be able to fit theteachings of multiple patents together like pieces of apuzzle.40 Therefore, after the decision of the KSR case,there are some critics who consider that the level of skillof a person skilled in the art may include fields oftechnology that are remote from a claimed invention. 41
The definition of a “person skilled in the art” by the JPO
Examination Guidelines for Patent and Utility Models inJapan42 is the same as the definition by the USPTO and it
includes the ordinary creativity to use ordinary technicalmeans for studies and developments. The definition of a“person skilled in the art” by the TIPO Patent
Examination Guidelines is substantially the same as thedefinitions by the USPTO and the JPO.
Compiling what is stated in the above, it is obviousthat definitions and criteria for the level of skills for a
person skilled in the art by each IP Office are similar toeach other. The same points are as follows: (1) a person
skilled in the art is a legally hypothetical person who has
common general knowledge at the relevant date (e.g.
effective filing day, etc.), and depending on thecomplexity of the claimed invention, a person skilled in
the area may mean a team of persons; (2) a person skilledin the art has common general knowledge;43
and the scope of knowledge covers the “general field”
and the “field relevant to the claimed invention,” andincludes knowledge expected of an average person inthese fields or knowledge that can be acquired by
performing routine experiments; (3) a person skilled in
the art has the skills expected of an average person in thefield relevant to the claimed invention; and (4) a person
skilled in the art can perform a routine experiments andresearches and is expected to obtain predictable means ofa solution in the prior art.
4 ●IIP Bulletin 2016 Vol.25

The apparent differences are as stated below: (1)whether or not a person skilled in the art has ordinary
creativity; and (2) while assessing the inventive step,whether or not a person skilled in the art takes“non-technical features as such” in to his/herconsideration. These differences often affect the
motivation to combine different prior arts and in turn,influence the assessment of the inventive step. Therefore,“level of a person skilled in the art” is an item worthy of
more efforts concerning international harmonization in
the future.

V Assessment of Inventive Step andCase Study
Regarding the approaches about the assessment of
inventive step of the EPO, USPTO, JPO, and TIPO,
please refer to the complete report of this research.
According to the comparative analysis, each IP Officeemphasizes that it is necessary to conduct reasonable
articulation on whether or not a claimed invention is
obvious from the view point of a person skilled in the art
based on the prior art. However, the approaches forassessment among different IP Offices are different andcan be categorized into the “problem and solution
approach,” which is adopted mainly by the EPO andcombines different prior arts by an objective technicalproblem, and into the “general rationale articulation,”
which is adopted mainly by the USPTO, JPO, TIPO, etc.
and combine different prior arts by articulating rationales
from various and broad points of view.
Because “using “a problem to be solved as an aim tosearch the solution and as a motivation to combine
different prior arts” can usually provide logicallyobjective rationales to articulate whether or not theclaimed invention is obvious from the view point of aperson skilled in the art based on the prior art. In addition,
the questionnaire summary report on agenda Q217 of
AIPPI indicates that, for the approach to assess inventive
step, many of group members preferred to adopt the“problem and solution approach” for harmonization.44
Therefore, this report analyzed the assessments of
the inventive step among the above IP Offices from the
aspect of “problem to be solved” in the hope that this
could can assist in the further harmonization involving
inventive step determination.
Actually, in the “general rationale articulation”
adopted by the USPTO, JPO, TIPO, etc., a “problem tobe solved” can also be a motivation for combining
different prior arts and can be correlated to the “problem
and solution approach” adopted by the EPO. In otherwords, the “general rationale articulation” alsoemphasizes the importance of “the problem to be solved”
but it is somehow different from the OTP of the “problem
and solution approach”. Consequently, this research tries●

IIP Bulletin 2016 Vol.25

to discuss the differences in these two approaches ofassessment by comparative study 45 of the following
representative cases.
(1) Case (I) – 1 through 5 –The Way to Define(Find) the Problem
The first difference related to the “problem to besolved” in assessment approaches adopt by the above IP
Offices, the “The way to define (find) the problem,” isillustrated below.
A: Case (I)-1 (EPO) Process for fabricating asemiconductor crystallized layer and process forfabricating a semiconductor device using the same 46 In this case, the objective technical problem wasreformulated to be “providing an alternative” which
results in equivalent technical effects.
B: Case (I)-2 (US): Decision on the case of ICON
Health & Fitness Inc.47 – In this case, the U.S. Court
found in this case as follows: the panel bed that is
disclosed by prior art document and the claimed treadmill
have the same problem; if a person skilled in the art tries
to solve the claimed problem in this case, he/she has areasonable motivation to improve the stability of thetreadmill base by applying the gas spring in acounterbalancing mechanism to the treadmill of the panel
bed; therefore, the claimed invention has no inventive
step.
C: Case (I)-3 (JPO): Biaxial forced mixer48 - In thiscase, the court found as follows: the problem to be solvedby the patent under conflict, “reduction of cost and space,”is found not only in the field of technology of the mixer,
but also any machine field; in short, it is an obvious
problem in the field of technology of device configuration.
Therefore, the solution of this problem can be deemed asa motivation to combine different teachings of prior art.
D: Case (I)-4 (TW):Decision on the case of the
improvement of a belt with hook and pile fastening tapeeffects49 - In this case, the court found as follows: alltechnical features of the patent under conflict havedisclosed in the prior art and the technical problems to besolved have commonality among the claimed invention
and cited inventions; therefore, the claimed invention as awhole would be easily conceived by a person who isfamiliar with weaving skills based on the content
disclosed in the prior art. In addition, the claimed
invention does not result in any unexpected effects;
therefore, it involves no inventive step.
E: Case (I)-5 (US): Decision on the case of
Wiseman50 - In this case, the court found as follows: thebrake system disclosed in the prior art documents D1 andD2 has the same problem, “to emit worn scraps from thebrake lining”; if a person skilled in the art attempts tosolve this problem, he/she has a reasonable motivation to
apply the technical idea of “providing multiple grooves
on the frictional surface of the brake device” to the disc5 ●brake system disclosed in D1 and to complete theclaimed invention as a whole; therefore, the claim
involves no inventive step. In addition, because thereexits obvious motivation for reasonable combination in
D1 and D2, t the problem “to emit water vapor or gas on
the frictional surface of the brake device” stated by theapplicant no longer has much importance.
F: Conclusion (I)As is apparent from the aforementioned cases, theapproach adopted by the EPO is mainly to find thetechnical solutions for the objective technical problem inthe same or a relevant field of technology, in a field oftechnology that has the same or a similar problem, or in afield of technology generating the same or similar effects
in order to solve the objective technical problem,
articulate whether or not the solution provided by theclaimed invention is obvious. In other words, it combines
different cited inventions (or disclosures) in prior art
utilizing the objective technical problem. In addition, aperson skilled in the art (of the EPO) has no creativity.
Therefore, the examiners have to compare the claimed
invention with the closest prior art objectively, identify
technical effects based on distinguishing features, andformulate the objective technical problem. Therefore, theobjective technical problem may not simply be a problem
same as those stated in the description (in other words,
the problem which the applicant thinks his invention
would attempt to solve). However, the technical effects
resulted from distinguishing features are determined bycomparing the effects stated in descriptions and theclosest prior art. Therefore, the objective technicalproblem is usually closely relevant to the problems oreffects stated in the description51 ; it will never be “aproblem that is known or obvious in the prior art but
without any relevance to the problems stated in thedescription” selected (subjectively) by the examiners. The
key point is “OTP must be formulated objectively”.
In the general rationale articulation adopted by the
USPTO, JPO, TIPO, etc., “a problem to be solved” used
to combine different cited inventions (or disclosures) inthe prior art (hereinafter referred to as a “problem used
for combination”) can be set as (A) a problem that is
pertinent to that stated in the description or (B) a problem
that is common among different cited inventions.
Identification of this commonality may cover “a known
or obvious problem in prior art that is (subjectively)
selected by an examiner from various and broad points ofview based on prior art documents or common generalknowledge.” In other words, As long as there exists
commonality in the problems solved by different citedinventions, the “problem used for combination” may be a
problem that has no relevance to “the problem to besolved by the claimed invention that is stated in thedescription”; however, regardless of the existence of a
relevance between the “problem used for combination”●

and “the problem to be solved by the claimed invention
that is stated in the description,” an examiner must
present an objective and reasonable articulation for thereason of combination (teaching, suggestion, motivation,etc.) to prove that the claimed invention as a whole isobvious. In other words, the approach adopted by
USPTO, etc. can utilize “a problem to be solved” as amotivation to search a solution from the prior art;
however, since a person skilled in the art is assumed tohave ordinary creativity, obvious and generally existing
problems can be used as the “problem used for
combination”. Therefore, the specific problem may be a
“problem that is known or obvious in the prior art”
selected by an examiner, “but has no relevance to the
problem to be solved by the claimed invention that isstated in the description.” The key point is “thearticulation of rationale must be reasonable.
(2) Case (II) – Features Taken into Account for
the Solution of the Problem
Next, the second difference, “features taken into
account for the solution of the problem,” will be
explained by using another case.
A: Case (II) (EPO Appeal Court): Decision onlithium tertiary-butoxide/FMC52 - In this case, the EPO
Board of Appeals (EPO BoA) found that the objective
technical problem in this case should be “a further
process to prepare lithium tertiary-butoxide by reaction
between lithium and tert-butyl alcohol.” In addition, theBoard of Appeals also indicated that the claimed
invention in this case includes features” to react for one toten hours”; however, the objective technical problem does
not include special requirements for yield and therefore
reaction time is not critical to the solution of the objective
technical problem. Consequently, it is not necessary toconsider this technical feature when assessing theinventive step in this case. In other words, features thathave no importance to a solution for the objective
technical problem have no importance when assessing theinventive step.
B: Conclusion (II): As shown in this case, whensearching for the solution of OTP, although the EPO alsoemphasizes “the claimed invention as a whole”, it isnecessary to check whether or not distinguishing features
really contribute to solution of the technical problem andachieve the technical effects stated in the description. If
some technical features do not make any contribution to
the solution of the problem, these features are not taken
into account while assessing the inventive step. 53
Therefore, even if the results obtained after combining
different cited inventions do not have all the technicalfeatures of the claimed invention, they may prove to lackthe inventive step in the claimed invention. This type oftreatment corresponds to the definition by the EPO that aperson skilled in the art has no creativity. Since a person
6 ●IIP Bulletin 2016 Vol.25

skilled in the art has no creativity, he/she cannot think offeatures that have no contribution to the solution of theobjective technical problem. Therefore, the features
making no contribution to the solution of the objective
technical problem should not become a part of thesolution of OTP. On the other hand, under the system of
the USPTO, etc., a person skilled in the art has ordinary
creativity and a specific problem that exists commonlyand generally in prior art can be used as a motivation tocombine different cited inventions “subjectively.”
Therefore, all features that specify the claimed invention
must be taken into account while assessing the inventive
step to ensure that the creativity is not abused to theextent that it affects objectivity.54 Therefore, only if allfeatures of the claimed invention are included in the
results obtained after combining different cited inventions,the inventive step of the claimed invention may bereasonably eliminated.
(3) Case (III) – Technical Character of the
Problem and Solution
Finally, this report will explain using another case injudgment by IP Offices on the inventive step of theclaimed invention in cases where differences in “technicalcharacter of the problem and solution,” i.e., of an
invention pertaining to a filing have technical features andnon-technical features simultaneously and the problem tobe solved or the solution involve non-technical aspects.
A: Case III (EPO BoA): Decision on the case of
Auktionsverfahren/HITACHI55 In this case, the Board of
Appeals judged as stated below. The claim in this casefulfills the definition of an invention; however, it is just a
modification “to determine a successful bidder by
adjusting the conventional Dutch auction method”(business method category) so that delays in informationtransmission between clients’ computers and the server
computer do not affect the auction results and it isessentially conducted by modifying commercial
transaction method in order to circumvent the technicalproblem of transmission delay, therefore the claimed
subject matter does not provide a technical solution to the
problem of delays in information transmission.
Consequentially, the modified Dutch auction method
corresponds to “non-technical features as such” and they
do not have to be considered when assessing theinventive step. Based on the aforementioned reasons, theclaim is considered to be only a solution of a problem of“atomization of the modified Dutch auction.” Automationof business method by using a computer or network is awell-known prior art in the relevant field. A person skilledin the art can automate the aforementioned auction
method by using a well-known computer network.
Therefore, the claim involves no inventive step.
B: Conclusion (III): The claimed invention having
technical features and non-technical features can easily●

IIP Bulletin 2016 Vol.25

pass examination of the definition of invention under the
EPO56; however, while assessing the inventive step of theclaimed invention, a person skilled in the art under the
EPO considers only the “features contributing totechnical character of the invention (FCTC)” to ensurethat “the objective technical problem and its solution
must be technical.” Therefore, if a claimed invention
contributes only to the solution of a problem in
non-technical field, it is difficult for the claimed invention
to pass the threshold of the inventive step and to obtain apatent. In other words, in order to obtain a patent, theclaimed invention must involve an inventive step in thefield of technology so that a creation in a non-technicalfield (such as abstract idea, business method, etc.) does
not obtained the protection of patent rights and therefore
will not obstruct the development of the industry.
The problem to be solved by a person skilled in theart under the schemes of USPTO and the JPO is not
limited particularly to the technical field and all featuresthat specify the claimed invention must be consideredwhen assessing the inventive step. Therefore, even if a
claimed invention contributes only to the solution of aproblem in a non-technical field, the claimed invention
may still obtain a patent beyond the threshold of theinventive step. Therefore, if the claimed invention
contains both technical features and non-technicalfeatures and involves innovation in a non-technical field,
the USPTO and the JPO adopt the definition of an
invention (subject matter eligibility) as the majorthreshold to prevent an invention in a non-technical fieldfrom obtaining a patent.57 Taking the current version of
MPEP (Manual of Patent Examining Procedure) of the
USPTO as an example, it specifically requires that “aclaimed invention must have additional element(s) suchthat the invention as a whole significantly exceeds
judicially recognized exception.” 58 However, if thethreshold of the definition of invention is set too high, theinventors will protect their result of the research anddevelopment (hereafter referred as R&D) by keeping it as
a business secret. Therefore, the outcome of new R&D
will not be disclosed to the public and therefore will not
contribute to further innovation; this will result in
conflicting with the proactive purpose of promoting thedevelopment of industry by means of the patent system.
59 Therefore, the effect that the USPTO adopts “thedefinition of an invention (subject matter eligibility)” as amajor threshold to prevent an invention in a non-technicalfield from obtaining patent right protection is worthy offurther observation.

VI Discussion and Suggestions
1

Discussion
From the aspect of “the problem to be solved”, themajor differences in assessment of inventive steps among
7 ●the four IP Offices are the following three points: “Theway to define (find) the problem,” “Features taken into
account for the solution of the problem,” and “Technicalcharacter of the problem and solution,” and thesedifferences may be relevant to the “level of a person
skilled in the art.”
Based on the “problem and solution approach,” aperson skilled in the art has no creativity, he/she has toformulate the objective technical problem based on thetechnical effects resulted from distinguishing features
between the claimed invention and the closest prior art. In
addition, when searching a solution, a person skilled in
the art does not think of features making no contribution
to the solution of the objective technical problem.
Therefore, it is not necessary to take such features into
account when assessing the inventive step. In addition,
when a person skilled in the art under the EPO assesses
the inventive step of a claimed invention, he/she only has
to consider “features contributing to technical character ofthe invention (FCTC)”. Therefore, if distinguishingfeatures include “non-technical features as such”, the“non-technical features as such” or “non-technical effects
that are achieved by the claimed invention” can be used
to formulate the objective technical problem rather than apart of the solution; and therefore, this will ensure that theinventive step of the claimed invention is acknowledgedon the basis of the FCTC. On the other hand, under thegeneral rationale articulation, a person skilled in the art
has ordinary creativity and therefore he/she can consider
a problem that can be reasonably solved by a claimed
invention and its solution from various and broad pointsof view. Therefore, when assessing the inventive step, allfeatures of a claimed invention must be considered so thatthe creativity of a person skilled in the art will not be so
abused to the extent that they affect objectivity. Moreover,the problem to be solved is not limited to technical fields.
When assessing the inventive step, “non-technicalfeatures” that do not contribute to the solution of atechnical problem must also be considered.
“Assessment of the inventive step” and “level of aperson skilled in the art” may also affect the weight of“secondary indicia.” Taking “unexpected effects” as an
example, the EPO defines that a person skilled in the art
has no creativity and he/she has to find a technicalsolution to solve the OTP. The main considerations in theselection of the closest prior art and formulation of an
objective technical problem are the “purpose and effect ofa claimed invention” and the “technical effects ofdistinguishing features” respectively. In other words,
when formulating an objective technical problem, the“effect that can be achieved by a claimed invention that is
specified in a description” is weighted considerably.
For this reason, in cases where an applicant files a
response that the claimed invention has unexpected
effects compared to prior art, if the solution provided by●

the claimed invention is so obvious that a person skilledin the art will absolutely adopt it (in cases of a “one-way
street” situation), the unexpected effect is just a bonus
effect 60 that can be obtained by a person skilled in theart without excising any of his/her creativity. Therefore, itcannot change the result that the claimed invention
involves no inventive step. This is because such
unexpected effect cannot affect the formulation of
objective technical problem and therefore won’t change
the selection of solution by a person skilled in the art. On
the contrary, the USPTO, JPO, etc. assume that a person
skilled in the art have ordinary creativity and is allowed toadopt “a problem or effect that does not have any
relevance to the effects stated in the description” as the
motivation for combining different prior arts. Therefore,
when the effect stated in the description is unexpectedcompared to the prior art, when assessing the inventive
step of the claimed invention, such unexpected effectshould be given more weight in order to prevent a person
skilled in the art from abusing his/her creativity andresults in non-objective judgment. This is because whenfacing a problem different with that stated by theapplicant (in the description, although a person skilled in
the art may come to the same solution and arrive at somecreation that is the same as the claimed invention, theeffect of this creation expected by this person may begreatly different from the effect stated in the description.
Therefore, sometimes it may practically exceed theordinary creativity of a person skilled in the art to expectthat his creation can achieve the same effect as that whichis stated in the description; under such situation, theexistence of inventive step of the claimed invention
should be acknowledged. This research expands theargument in relation to the “Impact of the closest prior art(CPA),” “Avoidance of (unreasonable or impermissible)
hindsight,” “Treatment of a nonobvious problem,” among
other aspects. For more detail, please refer to thecomplete report of this research.
2

ProposalCompiling the aforementioned, for both the“problem and solution approach” of the EPO and the“general rationale articulation” of the USPTO, JPO, TIPO,
etc., it is necessary to conduct reasonable articulation onwhether or not a claimed invention is obvious from theview point of a person skilled in the art based on the priorart and they also emphasize the importance of “theproblem to be solved.” Because “using “a problem to besolved as an aim to search the solution and as amotivation to combine different prior arts” can usuallyprovide logically objective rationales to articulate whether
or not the claimed invention is obvious from the view
point of a person skilled in the art based on the prior art, it
is suggested that the international harmonization forstandardization of the inventive step may be conducted
8 ●IIP Bulletin 2016 Vol.25

from the aspect of “the problem to be solved.”
In addition, from the aspect of using “the problem tobe solved” to analyze the inventive step determination
approaches adopted by the four IP Offices, there exists
three major differences including “the way to define theproblem”, “features taken into account for the solution of
the problem”, “technical character of the problem andsolution”, etc. In addition, these differences can berelevant to the “level of a person skilled in the art.” When
trying to harmonize the standards of the inventive stepfrom the aspect of “the problem to be solved”, these threedifferences, as well as the level of a person skilled in theart, should be taken into consideration and be harmonizedgradually from the easiest to the most complicated in thehope that a more practical and objective inventive step
standard can be obtained.
1

2

3

4

5

6

7

8

Franklin D. Prager, Standards of Patentable Invention from 1474
to 1952, 20 U. CHI. L. REV. 69, 71-71 (1952).
Landers, Amy L., The Inventive Step and Cooperative
Harmonization (June 12, 2013), Chapter from Intellectual
Property In Common Law And Civil Law (Toshiko Takenaka,ed.) 2013. Available at SSRN: http://ssrn.com/abstract=2500167
World Intellectual Property Organization, Standing Committee
on the Law of Patents, Report on the International Patent System,
SCP/12/3 Rev. 2, 48 (2/3/2009). Available at
http://www.wipo.int/edocs/mdocs/scp/en/scp_12/scp_12_3_rev_2.pdf (last visited 4/19/2015))
Predecessor of the World Trade Organization (WTO): General
Agreement on Tariffs and Trade (GATT 1994) is the final
agreement concluded between contracting countries as a resultof multilateral trade negotiations in the Uruguay Round. The
Agreement on Trade-Related Aspects of Intellectual Property
Rights (TRIPs) is included in GATT 1994. This Agreement
came into effect on January 1, 1996 and this is the mostcomplete and only multilateral agreement from among existing
internal laws that protects intellectual property rights related to
trade.
Agreement on Trade-Related Aspects of Intellectual Property
Rights, Art. 27(1), Apr. 15, 1994, 33 I.L.M. 1197.
European Patent Office, Guidelines for Examination in the EPO(EPO Examination Guidelines), Part G VII 2, November 2015
edition.
Leahy-Smith America Invents Act (AIA). A legislative bill thatPresident Obama of the United States officially signed on
September 16, 2011. U.S. patents were changed from afirst-to-invent system to the current first-to-file system by thislegislative bill. In addition, it is enforced mainly in five steps.
AIA, 35 USC Art. 103 are provisions mainly related to theinventive steps and novelty of an invention.
Article 29, paragraph (1) of the Japan Patent Act: An inventor of
an invention that is industrially applicable may be entitled toobtain a patent for the said invention, except for the following:(i) inventions that were publicly known in Japan or a foreigncountry, prior to the filing of the patent application; (ii)inventions that were publicly worked in Japan or a foreigncountry, prior to the filing of the patent application; or (iii)inventions that were described in a distributed publication, orinventions that were made publicly available through an electric
telecommunication line in Japan or a foreign country, prior to thefiling of the patent application.

●

IIP Bulletin 2016 Vol.25

9中華民國專利法第二十二條第二項規定：「發明雖無前項各款所列情事，但為其所屬技術領域中具有通常知識者依申請
前之先前技術所能輕易完成時，仍不得取得發明專利。
10 劉國讚, 專利法之理論與實用, 第 5 章專利要件, pp130-133,
2014 版。
11 Draft Substantive Patent Law Treaty, Article 18 [Alternative A]
An invention shall be considered to involve an inventive step (benon-obvious) if, having regard to the prior art as defined in
Article 8, it would not have been obvious to a person skilled in
the art at the filing date or, where priority is claimed, the priority
date of the application claiming the invention, as prescribed in
the Regulations.
12 WIPO started discussions related to the international harmony ofpatent laws in 1983. The Standing Committee on the Law ofPatents (SCP) was established in 1998 as a forum for discussionof agendas, promotion of cooperation, and implementation ofinternational development of patent laws.
13 Association Internationale pour la Protection de la PropriétéIntellectuelle (AIPPI), Summary Report of Question Q217
(2011)
The
patentability
criterionofinventive
step/non-obviousness.
Availableathttps://www.aippi.org/download/commitees/217/SR217English.
pdf
14
EPC Article 54 (1): An invention shall be considered to be new if
it does not form part of the state of the art.
15 EPC Article 54 (2): The state of the art shall be held to comprise
everything made available to the public by means of a written ororal description, by use, or in any other way, before the date offiling of the European patent application.
16 EPC Article 54 (3): Additionally, the content of European patentapplications as filed, the dates of filing of which are prior to thedate referred to in paragraph 2 and which were published on orafter that date, shall be considered as comprised in the state of theart.
17 吳俊逸, 分析各國對於衝突申請案之處理原則,智慧財產權
月刊 Vol. 195, pp45-79。
18 EPC Article 56: … If the state of the art also includes documents
within the meaning of Article 54, paragraph 3, these documents
shall not be considered in deciding whether there has been an
inventive step.
19 EPO Examination Guidelines, Part G IV 1, November 2015
edition.
20 TIPO, 五邊局專利審查實務差異性 2012版。
21 When calculating the grace period, the date of filling a European
patent application shall be its start date, but not the priority date.
22 Id. Note 7.
23 鍾文正, 論先前技術公開之國際調和,智慧財產權月刊 Vol.
180, pp33-54。
24 A person who discloses an invention first may usually be the firstinventor instead of the person who files a patent first. Therefore,
an invention that is disclosed earlier during the grace period
should be guaranteed.
25 Id. Note 23.
26 JPO, Part III, Chapter 3: Secret Prior Art (applicable since
October 1, 2015) of the Examination Guidelines for Patent andUtility Model in Japan
27 Id. Note 17.
28 TIPO, 專利審查基準第二篇第三章專利要件。
29
Id. Note 23.
30 Id. Note 17.
31 張仁平, 論述專利之熟悉該技術者之定義的國際調和,智慧
財產權月刊 Vol. 169, pp128-212。
32 The term used by the EPO is “a person skilled in the art,” by the

9 ●USPTO, “a person having ordinary skill in the art, PHOSTA,”
by the JPO, “当業者,” and by the TIPO, “所屬領域具有通常知識者” respectively.
33 EPO Examination Guidelines, Part G VII 1.3, November 2015
edition.
34 European Patent Office, the Board of Appeal Decisions (EPO
BoA Decisions), T 176/84 and T 195/84.
35 EPO BoA Decisions, T 0641/00 date of decision:2002/09/26.
(p10: “… the skilled person will be an expert in a technicalfield.”; p9: “…the person skilled in the art had knowledge of the
non-technical method so that only the technical aspects of theapparatus were taken into account in assessing inventive step.”.)36 EPO Examination Guidelines, Part G VII 6, November 2014
edition, “Non-technical features, to the extent that they do notinteract with the technical subject-matter of the claim for solving
a technical problem, i.e. non-technical features "as such", do notprovide a technical contribution to the prior art and are thus
ignored in assessing inventive step.”.
37 European Patent Office, Case Law of the EPO Boards of Appeal(EPO BoA Case Law), I.D 8.1, 7th edition Sep. 2013, p187,“person skilled in the art … namely that none of them suggested
he was possessed of any inventive capability.”.
38 USPTO, M.P.E.P. 2141, 7th ed. (Rev. 07, 2015.10).
39
KSR, 550 U.S. at 421, 82 USPQ2d at 1397.
40 Id. Note 39, at 420, 82 USPQ2d at 1397.
41 Stephen G. Kunin and Philippe J. C. Signore, A Comparative
Analysis of the Inventive Step Standard in the European andJapanese Patent Offices from a US Perspective, IP Litigation
January/February 2008, pp 15-23.
42 JPO Examination Guidelines for Patent and Utility Models inJapan, Part III, Chapter 2: Novelty and Inventive Step (applied
from October 1, 2015).
43 The Third Subcommittee, the First Patent Committee,“Comparative Study on Judgment of the Inventive Step by the
Patent Offices in Japan, U.S., and Europe – Matters of Design,”
Chizaikanri, Vol.66, No.1, pp.40-49 (2016).
44 Id. Note 13.
45 In this summary, case titles and conclusions obtained frominductive logic only are listed. For more details on cases, pleaserefer to the research and investigation report.
46 EPO BoA Decisions, T 0767/02 date of decision: 2005/06/01.
47 United States Court of Appeals for the Federal Circuit, 496 F.3d
1374 (2007), date of decision: 2007/08/01.
48 Japan, Tokyo High Court on May 29, 1996, Tokyo High Court
1992 (Gyo-Ke) No.142.
49 台灣智慧財產法院, 2010年度行專更(一)字第005 號, 判決
日期：2011年5月4日。
50 United States Court of Customs and Patent Appeals., 596 F.2d
1019 (1979), date of decision: 1979/04/26.
51 G. Knesh, Assessing Inventive Step in Examination andOpposition Proceedings in the EPO, epi Information 3/1994,
pp95-101, “There must be a basis for the reformulated problem
in the application as filed, the problem must be »foreshadowed«
by what is said in the application”.(p96)
52 BoA Decisions, T0442/02 date of decision:2004/10/26.
53 EPO BoA Case Law, I.D 9.5, 7th edition Sep. 2013, pp208-209.
54 USPTO, M.P.E.P. 2100-7 “…, when evaluating the scope of aclaim, every limitation in the clam must be considered.”；M.P.E.P.
2111.05 “USPTO personnel must consider all claim limitations
when determining patentability of an invention over the prior art.
In re Gulack, 703 F.2d 1381, 1385,217 USPQ 401, 403-04 (Fed.
Cir. 1983). Since a claim must be read as a whole, USPTO
personnel may not disregard claim limitations comprised of●printed matter.”.
EPO BoA Decisions, T258/03 date of decision:2004/04/21.
56 趙慶泠, 電腦軟體專利標的適格性之測試法演進-從歐洲觀
察美國,智慧財產權月刊 Vol. 201, pp5-47。
57 Etsuko Yoshida, “A Comparative Law Study on the Patent
Eligibility －Focus on the Method Invention －” (FY2013
reports in Industrial Property Rights Research Promotion
Projects (FY2013 to FY2015) (Institute of Intellectual Property,
June 2015).
58 Wu Chia-Ying, “After Myriad: The Comparative Study on
Biotechnology Patent Practice” (FY2013 reports in Industrial
Property Rights Research Promotion Projects (FY2013 toFY2015) (Institute of Intellectual Property, June 2015).
59 Michael Loney, Biotech Company Consider Trade Secrets as
Alternative to Patents, Managing Intellectual Property,
2015/06/30.
60 EPO Examination Guidelines, Part G VII 10.2, November 2014
edition.
55

10 ●IIP Bulletin 2016 Vol.25