1. What Is the Inventive Step?
2. Why is the Inventive Step Rule Important?
3. Reasons to Consider Not Using the Inventive Step
4. Reasons to Consider Using the Inventive Step
5. Examples of the Inventive Step

What Is the Inventive Step?

The inventive step is used to find out if the patent is in fact for a new item or just an obvious improvement on an existing item. Inventive steps make sure patents aren't awarded to existing inventions that the "inventor" just improved upon. These patents could allow someone to make money off of an item just because they tweaked it. This patent could also allow them to sue companies that improve their own processes just because they made small changes as well.

The applicant must prove that the improvement isn't obvious to people within the industry and that there are actually improvements that come with patenting the idea.

One of the key words when talking about the inventive step is "obvious." Many people also refer to the inventive step as the "non-obviousness clause." The EPO defines this as going beyond the expectations of technology, instead of just following the next natural step.

For the most part, the term "inventive step" is used by our counterparts in Europe; however, it is synonymous with the term "non-obviousness" that Americans use today.

For example of an inventive step, it's a fairly common fact in the gardening community that plants need water and vitamins to grow. An inventive step would be mixing the two in a product, because it's easy to assume that gardeners have been doing that for decades.

Another term that is often used for the inventive step is novelty. In Future Science, Dr. Jonathan Atkinson and Dr. Rachel Jones define novelty as an idea that a patent should not be available to the public before it was filed. This includes:

  • Discussing it at a conference or exhibition.

  • Selling it or giving it away.

  • Promoting the event in marketing materials.

By filing for a patent before it hits the market, the owner is able to prove that it was his idea, and that no one else has had the thought.

Why is the Inventive Step Rule Important?

The inventive step rule lets companies continue coming up with new ideas without worrying about running into a patent law. Instead of stopping natural progress (and creating a monopoly for the company that has the idea first), this clause allows companies to continue updating their systems to save money and resources.

In a paper presented at the Fordham Conference, John Richards explains that 'obvious' is Latin for 'upon the road,' or the next steps that companies or inventors would take in the process. Technology is an important example of this. Over the past several years, new technology has followed a pattern where it becomes lighter, cheaper, and smaller. Look at the first cell phone and how far it has improved to become the phones we use today. Patenting a model that is slightly lighter or smaller than a competitor (like an iPhone that's made of plastic or a lighter metal) would be an inventive step that follows an obvious progression – not an invention.

Reasons to Consider Not Using the Inventive Step

One of the biggest challenges faced in patent law and novelty is the subjective nature of the tests. It's hard to prove something is just an inventive step, so today's rules follow interviews and personal opinions.

The United States patent office uses the Teaching-Suggestion-Motivation (TSM) test to determine non-obviousness. Some say it's too controversial to use, but it proves that there must be some teaching or suggestion involved to form an idea. It is also referred to as a way to prevent hindsight bias.

Most legal teams compare the new idea with the existing item through interviews. They find people who are familiar with the industry and ask them about the differences between the two items. Some critics say this process is biased because of the person's background, education, and experience. This means the criteria changes from industry to industry, and also changes from person to person.

Reasons to Consider Using the Inventive Step

Even though some people might think the current rules are unfair, there are important reasons for keeping the inventive step rules on the books. The Omics Group says the inventive step rules follow the original goals of the patent system. Their main goal is to encourage people to come up with new ideas that they can protect and make money from. Trying to buy old ideas or making minor tweaks focuses on the money part of the patent office, not the invention part.

There are also people who are trying to improve the current rules and how lawyers prove them. The European Journal of Law and Technology listed one study in which more than 200 students reviewed two products to see if it was an inventive step or actual invention. Based on this data, the patent judges had more information and opinions about whether something was obvious.

Currently, in the United States, determining obviousness requires three steps:

  • Evaluating the scope and content of the art.
  • Determining the differences between the original art and the new invention.
  • Resolving the skill level within the art.

This provides a concrete way to determine obviousness that can be applied across most cases.

These steps are also known as Graham factors, based on the case Graham et al. v. John Deere Co. of Kansas City et al. They also consider three additional factors in the products:

  • Commercial success
  • Long-felt but unsolved needs
  • Failure of others

This helps create a big picture view of how the product will affect society if it is patented.

Examples of the Inventive Step

According to the World Intellectual Propery Organization, inventive step rules have been around since the 15th century, but they became common in the 19th century. As patents become more advanced, the inventive step rules are used more often – especially in the tech field where software companies are making tools that common people aren't familiar with.

What is the difference between an inventive step and a non-obvious rule? It all depends on where you live. Simplicable says that most American legal systems use the term "inventive step," while most European systems use the term "non-obviousness." While this article has used both terms, it's important to stick to the one within your region to prevent confusion.

The inventive step clause will mostly be used in cases of patent challenges between two companies. One side will argue that the invention is new, while the other side says it was an inventive step that its clients came up with on their own. This shows the value of the non-obviousness rules even when a patent is approved.

The nature of the inventive step means companies have a chance to win their patents when they face the judge. However, if your company is not sure how to develop a case to prove the difference between the two, consider posting a job to hire a lawyer through UpCounsel who has experience in facing patent challenges and these non-obvious clauses. You can receive multiple free custom quotes from the top 5% of lawyers with an average of 14 years of experience.