CLR I D Inventive step

1.
Introduction
2.
Problem and solution approach
3.
Closest prior art
3.1.
Determination of closest prior art in general
3.2.
Same purpose or effect
3.3.
Similarity of the technical problem
3.4.
Most promising starting point
3.4.1
General
3.4.2
Most promising springboard
3.5.
Further criteria for determining the closest prior art
3.5.1
Defective disclosure
3.5.2
Confidential disclosure in the application
3.5.3
Speculative character
3.5.4
Old prior art documents
3.5.5
Improvement of a production process for a known product
3.6.
Consequences of choosing a certain starting point
4.
Technical problem
4.1.
Determination of the technical problem
4.2.
Alleged advantages
4.3.
Formulation of the technical problem
4.3.1
No pointer to the solution
4.3.2
Problem formulated in the patent application as starting point
4.3.3
Formulation of partial problems – lack of unity
4.4.
Reformulation of the technical problem
4.4.1
General
4.4.2
Subsequently invoked technical effect
4.5.
Alternative solution to a known problem
4.6.
Solving a technical problem – post-published documents
5.
"Could-would approach"
6.
Ex post facto analysis
7.
Expectation of success, especially in the field of genetic engineering and biotechnology
7.1.
Reasonable expectation of success
7.2.
Try and see situation
8.
Skilled person
8.1.
Definition of the skilled person
8.1.1
Definition
8.1.2
Competent skilled person – group of people as "skilled person"
8.1.3
Definition of the person skilled in the art in the field of biotechnology
8.1.4
Identification of the skilled person in the case of computer-implemented inventions
8.2.
Neighbouring field
8.3.
Skilled person – level of knowledge
8.4.
Everyday items from a different technical field
9.
Assessment of inventive step
9.1.
Treatment of technical and non-technical features
9.1.1
Technical character of an invention
9.1.2
Inventions having both technical and non-technical features
9.1.3
Problem and solution approach when applied to "mixed" inventions
a)
General issues
b)
The Comvik approach
c)
Non-technical features and technical contribution
d)
Non-technical features and interaction with technical subject matter
e)
Technical implementation of excluded subject-matter
9.1.4
The aim to be achieved in the formulation of the technical problem
9.1.5
Credible technical effects
9.1.6
Assesment of features relating to a presentation of information
a)
Mental activities based on data visualisation
b)
Display of data and user preferences
9.1.7
Assesment of features relating to meta methods for software production
9.1.8
Assesment of features relating to mathematical algorithms
9.2.
Combination invention
9.2.1
Existence of a combination invention
9.2.2
Partial problems
9.3.
Combination of teachings
9.4.
Technical disclosure in a prior art document
9.5.
Features not contributing to the solution of the problem
9.6.
Substitution of materials – analogous use
9.7.
Combination of documents
9.8.
Chemical inventions
9.8.1
Problem and solution approach in chemical inventions
9.8.2
Structural similarity
9.8.3
Broad claims
9.8.4
Intermediate products
9.8.5
Predictable improvements resulting from amorphous forms as compared to crystalline forms
9.8.6
Synergistic effects
9.9.
Equivalents
9.10.
Selection inventions
9.11.
Problem inventions
9.12.
New use of a known measure
9.13.
Obvious new use
9.14.
Need to improve properties
9.15.
Disclaimer
9.16.
Optimisation of parameters
9.17.
Small improvement in commercially used process
9.18.
Analogy process – envisageable product
9.19.
Examples of lack of inventive step
9.19.1
Foreseeable disadvantageous or technically non-functional modifications
9.19.2
Technical standards
9.19.3
Reversal of procedural steps
9.19.4
Purposive selection
9.19.5
Automation
9.19.6
Enhanced effect
9.19.7
Simplification of complicated technology
9.19.8
Choice of one of several obvious solutions
9.19.9
Several obvious steps
9.19.10
Selection from obvious alternatives
9.19.11
Putting the closest prior art device into practice
9.19.12
Animal testing and human clinical trials
10.
Secondary indicia in the assessment of inventive step
10.1.
General issues
10.2.
Technical prejudice
10.3.
Age of documents – time factor
10.4.
Satisfaction of a long-felt need
10.5.
Commercial success
10.6.
Market competitors
10.7.
Simple solution
10.8.
Surprising effect – bonus effect
10.9.
Comparative tests
 

Source: http://www.epo.org/law-practice/legal-texts/html/caselaw/2019/e/clr_i_d.htm

Date retrieved: 17 May 2021

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