💡 Obviousness or Inventive Step - How the EPO Determines Inventive Step #rolfclaessen
Channel: Rolf Claessen
Date: 2018-02-08

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🔴 Description: Obviousness – What is obviousness or inventive step?

I am Rolf Claessen, patent attorney and patent attorney at Michalski · Hüttermann & Partner, and in this video I will explain what obviousness is for the assessment of the patentability of inventions. First of all, something about the wording. The European Patent Office speaks of inventive step, whereas the USPTO speaks of obviousness. Since I am a European Patent Attorney, I will use inventive step in the following.
In this video I will show you how the European Patent Office assesses inventive step and how you craft an ideal attack based on inventive step in opposition proceedings.
The European Patent Office uses the so called problem-solution-approach to assess inventive step. A link to a detailed guide by the European Patent Office is in the shownotes: https://www.epo.org/law-practice/legal-texts/html/guidelines/e/g_vii_5.htm
First you would find the closest prior art. This is a document that teaches a highly similar concept as compared to the invention and should be in the exact same technical field. Ideally, there is only one single difference.
Then you determine the objective technical problem. Does the patent application or the patent teach a particular advantage over the prior art document that is related to this difference. So the problem according to the invention would be to achieve this advantage.
An example: you have a claim 1 claiming a car with four wheels and a rear view mirror. Assume that a car with four wheels is known and described in a prior art document. Also assume that the rear view mirror is not described in the prior art document and is also not described in the prior art in connection with a car with four wheels, so that the invention is novel. The patent application teaches a particular advantage for this rear view mirror: you can easily see the traffic behind you and can avoid car collisions more easily. So the objective technical problem would then be to make it easier to avoid car collisions.
Once you have defined the objective technical problem, you would have to find out, whether the claimed invention, starting from the closest prior art and the objective technical problem, would have been obvious to the skilled person.
You need to determine not only whether the skilled person could have arrived at the invention by adapting or modifying the closest prior art, but whether he would(!) have done so because the prior art incited him to do so in the hope of solving the objective technical problem or in expectation of some improvement or advantage (see T 2/83). The incentive for the skilled person can also be an implicit prompting or implicitly recognizable incentive to combine the elements from the prior art (see T 257/98 and T 35/04).
Going back to our example: we would need to find a teaching in the prior art that would teach a rear view mirror for avoiding collisions with vehicles. Assume that there is an earlier document that teaches rear view mirrors for bicycles for avoiding collisions with cars or other bicycles. This would be a good document for this purpose.
Let’s use our example to formulate an ideal attack in opposition proceedings based on inventive step:
The first document teaches a car with four wheels without the rear-view mirror. This is a good document for the closest prior art, because it is in the exact same technical field and has all technical features of the claim to be attacked with only one exception.
The objective technical problem is the avoidance of collisions.
The skilled person would have arrived at the invention by adapting the closest prior art document by reading the teaching of the second document that teaches the bicycle with a rear-view mirror, because the skilled person had the incentive to combine these documents. The second documents teaches exactly that you can avoid collisions with cars by using a rear-view mirror. It also comes from the technical field of vehicles and the topic is also the traffic on streets.



🔴 Contact:
Dr. Rolf Claessen
Michalski · Hüttermann & Partner Patentanwälte mbB
Speditionstraße 21
D-40221 Düsseldorf
📞 +49-211-159249-0
📠 +49-211-159249-20
✉️ claessen@mhpatent.de



🔴 Legalese and Disclaimer 

You have been watching a video by Rolf Claessen. The views expressed by the participants of this program are their own and do not represent the views of nor are they endorsed by their respective law firms.  None of the content should be considered legal advice.  This video should not be construed as legal advice or legal opinion on any specific facts or circumstances.  The contents of this video are intended for general informational purposes only and you are urged to consult your own patent attorney on any specific legal questions. As always, consult a patent attorney.