Key Takeaways

  • The inventive step (or non-obviousness) ensures a patentable invention goes beyond routine development and is not obvious to someone skilled in the field.
  • It is one of the three core patentability criteria worldwide, along with novelty and industrial applicability.
  • Determining inventive step involves assessing whether the invention shows a technical advancement or economic significance beyond prior art.
  • Standards for inventive step differ slightly between jurisdictions such as the USPTO, EPO, and PCT framework.
  • Courts and examiners rely on structured tests—like the problem-solution approach in Europe and the Graham factors in the U.S.—to determine non-obviousness.
  • Evidence such as commercial success, unexpected results, or long-felt needs can help prove an inventive step.
  • Engaging a patent attorney can ensure your application satisfies the inventive step requirement and withstands examination challenges.

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.

Global Standards for Assessing the Inventive Step

In patent systems worldwide, the inventive step—often termed non-obviousness—is central to determining whether an invention deserves protection. While the principle is universal, its interpretation varies across jurisdictions.

  • European Patent Office (EPO): The EPO uses a problem-solution approach, assessing whether the invention would have been obvious to a person skilled in the art based on prior art. The examiner defines the closest prior art, identifies the technical problem, and evaluates whether the claimed invention offers a non-obvious solution.
  • United States (USPTO): U.S. law refers to the concept as non-obviousness under 35 U.S.C. § 103. The Supreme Court case Graham v. John Deere Co. established factors for evaluation, including prior art scope, differences between the prior art and the claims, and the ordinary skill level in the field.
  • PCT Applications: Under the Patent Cooperation Treaty (PCT), inventive step and non-obviousness are treated as equivalent terms. Both require that the invention not be an evident next step for a person skilled in the art.

These international standards help harmonize the evaluation of patent applications, ensuring that protection is granted only for genuine innovation.

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.

Key Criteria for Determining Inventive Step

Patent examiners consider several factors to determine whether an invention involves an inventive step:

  1. Technical Advancement: Does the invention provide a measurable improvement or novel technical effect compared to prior art?
  2. Economic Significance: Does it offer economic benefits, such as cost reduction or improved efficiency?
  3. Unexpected Results: Are the outcomes surprising or beyond what experts would expect based on existing technology?
  4. Long-Felt Need: Does the invention solve a problem that has persisted despite others’ attempts to address it?

The World Intellectual Property Organization (WIPO) emphasizes that these factors collectively help establish whether the invention is the product of inventive ingenuity rather than routine development.

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.

Common Challenges in Proving an Inventive Step

Establishing that an invention is non-obvious can be difficult because “obviousness” is inherently subjective. The “person skilled in the art” standard is a hypothetical construct, not an actual individual, and interpretations can vary among examiners.

  • Hindsight Bias: Evaluators may unknowingly judge an invention as obvious after seeing the solution, even if it wasn’t apparent beforehand.
  • Overlapping Prior Art: When several existing technologies combine similar features, it becomes harder to prove that your invention required inventive thought.
  • Inconsistent Application Across Fields: What qualifies as non-obvious in software or biotechnology may differ substantially from mechanical inventions.

To overcome these challenges, applicants often include expert declarations, comparative data, or experimental results demonstrating the invention’s distinctiveness.

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.

How to Strengthen Your Case for Inventive Step

Inventors can improve their chances of passing the inventive step test by emphasizing the technical contribution and innovative leap of their creation. Some best practices include:

  • Clearly Define the Technical Problem: Frame your invention as solving a specific, previously unresolved issue.
  • Highlight Unique Combinations: Show how the combination of known elements yields unexpected or synergistic results.
  • Provide Experimental Evidence: Demonstrate measurable improvements, such as enhanced performance or reduced costs.
  • Include Comparative Data: Prove that existing technologies could not achieve the same results without your new approach.
  • Use Professional Drafting: Patent attorneys can articulate claims to emphasize the inventive concept and avoid overly broad or narrow descriptions.

Strong documentation and careful claim drafting can help demonstrate that an invention isn’t merely a predictable modification of prior art.

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.

Illustrative Case Studies of Inventive Step Application

  1. Pharmaceutical Industry: Developing a new drug formulation that increases bioavailability or reduces side effects may constitute an inventive step, even if it uses known compounds.
  2. Mechanical Engineering: A unique gear mechanism that reduces friction beyond prior solutions can qualify as non-obvious.
  3. Software Technology: An algorithm improving data processing efficiency in a way not previously achieved can be patentable if the improvement is technical and non-trivial.
  4. Biotechnology: Modifying a known genetic sequence to produce a more stable protein may be inventive if it leads to surprising or unexpected benefits.

These examples illustrate how inventive steps appear across industries and reinforce the importance of demonstrating why the invention stands out from predictable developments.

Frequently Asked Questions

1. What is the difference between novelty and inventive step? Novelty means the invention is entirely new—it hasn’t been disclosed publicly. The inventive step (non-obviousness) means that, even if new, the invention must also show ingenuity beyond what an expert could easily deduce.

2. Who determines whether an invention involves an inventive step? Patent examiners at the national or international level assess inventive step during the patent application process, often referencing the person skilled in the art standard.

3. Can an invention fail the inventive step test but still be new? Yes. An invention can be novel yet still obvious to a skilled person. Such inventions fail the inventive step requirement and are not patentable.

4. How can I prove my invention has an inventive step? Include technical data, experimental results, or expert testimony showing that your invention achieves unexpected results or addresses long-standing problems in innovative ways.

5. Does the inventive step apply to all patents worldwide? Yes, but the terminology and evaluation criteria differ slightly by region. For example, the U.S. uses “non-obviousness,” while the EPO and PCT use “inventive step.”

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.