💡 Obviousness or Inventive Step - How the EPO Determines Inventive Step

Inventive Step or Obviousness 🔴 Subscribe ► www.youtube.co... Thank you! ☺️ #rolfclaessen
🔴 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: www.epo.org/la...
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
📞 [phone]
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✉️ [e-mail]
🔴 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.

[@BallyBoy95]

You're awesome, thanks for this channel and sharing your wisdom with us.

[@DavidG2P]

Der Fachmann hätte D1 und D2 kombinieren können, um so zum Gegenstand der Erfindung zu kommen. Wo aber war der Hinweis für den Fachmann, D1 und D2 tatsächlich zu kombinieren? Ein solcher Hinweis wird ja in den EPA-Prüfungsrichtlinien zu Could/Would gefordert.

[@Middleotr]

As I understand your example, the closest prior art is a car with four wheels, the technical problem is to avoid collision with other vehicles and the solution is a rear view mirror. If there was then a second document with rear view mirror on a bicycle; then the judgement is, would a skilled person have been able to combine the second document to the technical problem and come to the solution? if so this would NOT be regarded as an inventive and therefore not patentable. Is my understanding correct?

[@amaranthflavius]

that is what i understood as well. but i would also like a confirmation if that is correct

[@gametesterkid2748]

Let 's make it clear, if your proposed invention is a "rearview mirror" to avoid collision issues (assuming that the rear view mirror doesn't exist yet), THEN your closest prior art is the "rearview mirror" of a bicycle, because the object of the invention is the same - to avoid collision. NOT a car with four wheel, (because the object of a car with four wheel is to transport). going back the the proposed rear view mirror is obvious in the rearview mirror of the bicycle AND therefore not PATENTABLE.

[@chopinfu3428]

​@@gametesterkid2748 Note that at the very first he said his invention containing four wheels and a rearview mirror. starting from this, you can only find from the closest field which is the car with four wheels, not the bycicle. it should be the same filed prior art.

[@abdelali4373]

Very cool. Thank you, sir. Is there another explanation in the form of a step-by-step method map, because I do not know English?

[@irvindzimiri3267]

I want to ask about Novelty. If someone published an online articule for example saying indoor wall mounted aircons should be made with a superellipse shape blow air at a 20,30,40 degree angles for them to nicely warm people in the room. And they go on to show researh data of superellipse shaped arcons warming up rooms at 20,30,40 degree angles. They dont patent anything its just an article. Then you happen to have a similar idea without reading that article and made a proto type but yot idea is a circular shape and you want to file a Utility Patent. Will that idea be concidered NOVEL?

[@happyandhealthy888]

Time to rethinking patent

[@chopinfu3428]

what is the difference between could and would ?

[@longlong4339]

Is the application show an inventive step? Prior Art - ear-like handle of coffee cup that are often quite slippery Claim: Coffee cup with an ear-like handle characterized in that the handle is made of rubber.

[@happyandhealthy888]

technical problem technical solution???