Obtaining an EP Patent - A crash course for the US applicant #2

16 November, 2023

Focus: Claim examination – My claim is rejected for lacking an inventive step

My claim received objection from a European Examiner because it “cannot be considered to involve an inventive step”. What can I do?

This is a common objection based on Article 56 EPC, which states that an invention must involve an inventive step to be patentable. It is often compared to the “non obviousness” criteria in the US.

However, the typical arguments used to defend “non obviousness” are unlikely to be as successful at the EPO as it might be at the USPTO. You are much more likely to convince an examiner of inventiveness if you follow the EPO guidelines - which describe a “problem solution approach” to assess whether a claimed invention involves an inventive step.

The problem-solution approach

1) Determine the closest prior art.

In general, the closest prior art is identified in the opinion accompanying the Search Report.

The closest prior art is the most realistic starting point for reaching the invention. Therefore, the overriding criterion for the closest prior art is that it pertains to the same technical field and aims to solve the same or a similar technical problem as the invention. This generally means a prior art document which has a similar objective and requires the smallest number of modifications to reach the claimed invention.

However, in the determination of the closest prior art, ex post facto considerations should be avoided. Consequently, a document which does not mention the problem to be solved would not normally qualify as the closest prior art, regardless of the number of technical features it may have in common with the claimed invention.

If, for example, your application relates to a battery for an electric vehicle and aims to improve cooling by providing a specific cooling circuit, the closest prior art is likely to relate to a battery module with a cooling circuit.

However, if your application is in the field of yogurts and aims at providing an improved process for manufacturing Greek-style yogurts, the closest prior art should relate to the field of yogurts and not to the field of cheeses, even if there are many similarities between the two fields and the processes used in these respective fields.

2) Establishing “an objective technical problem”.

Here, you need to compare the closest prior art and the claimed invention to identify differences between the two. In our above example, perhaps your specific cooling circuit comprises a valve, but the closest prior art does not disclose any valves.

Then, the technical effect of the differences is identified. The technical effect is the technical advantage provided specifically by the differences. For example, the valve may improve control over the flow of coolant in the cooling circuit. Ultimately, this may lead to improved temperature control of the battery.

This technical effect is used to determine the objective technical problem solved by the invention, starting from the closest prior art. In our example, the objective technical problem would be “how to improve temperature control of a battery?”.

3) Evaluate whether the claimed invention would have been obvious to the skilled person.

The third step is comparable to the “Teach, Suggest or Motivate” test commonly used in the US. The idea is to identify whether there is any teaching in the rest of the prior art or in the closest prior art itself that would have prompted the skilled person, whose goal is to solve the objective technical problem, to modify or adapt the closest prior art to reach the claimed solution.

If none of the prior art documents provide solutions for solving the objective technical problem, meaning that none of the prior art discusses, for example, a valve for controlling a flow of coolant, then you are in a strong position to defend inventive step.

If some of the cited prior art discusses the objective technical problem but solves it with a different solution, you will also be able to defend inventive step. This would be the case if, for example, some cited documents discuss controlling the temperature of a battery, but no documents discuss a valve.

Finally, if the cited prior art documents describe the solution, but not for solving the same technical problem, you should still be able to contest a lack of inventive step. For example, a cited document may discuss using a valve, but the valve may not be used for the purpose of controlling the battery’s temperature.

As an applicant, what should you do?

First, you should be careful when drafting the description to associate a technical effect to each of the features found in the claims. This will help you defend any feature in your problem-solution approach.

Secondly, if you receive an objection under article 56 EPC for lack of an inventive step, you should respond by clearly following the problem-solution approach. We suggest clearly stating each step of the approach. In this regard, a strong response will include phrases such as “The difference between document D1 and the claim is […]”, “the technical effect of this difference is […]”, “the objective technical problem is […]”, “none of the cited prior art discloses the claimed solution for solving the objective technical problem” or “Document D2 discloses a solution which is different to the claimed solution”. This is more likely to convince an examiner that the claimed invention is, in fact, inventive.

It is worth noting that in the problem-solution approach, the identification of the closest prior art and the goal pursued by the person skilled in the art are key. Indeed, if the missing feature (“the difference”) is disclosed in the prior art but for a different purpose, then you will have a solid argument to defend the inventive step.

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