Assessment of inventive step

Abstract: There are a number of factors which influence an objective assessment of inventive step i.e. the skills of the Examiner, the hindsight knowledge, the guidelines for examination and not the least the ability to rightly define a fictive reference which delimits the obvious from the non-obvious. Once this fictive reference, known by the name as the skilled person in the art, has been established the assessment of inventive step begins. The characteristics of the person skilled in the art have to be assessed at the time of the invention which in many cases dates back several years. This renders more difficult a proper assessment of inventive step. Most of the inventions are a combination of already known elements with well-known functions with the result that the inventive activity is a question of how the person skilled in the art has come to combine the known elements in the manner claimed by invention without a reasonable expectation of success. The aforementioned ability to combine often belongs rather to creativity or logic than to an inventive activity - qualities which, according to guidelines for examination at both EPO and USPTO, make the person skilled in the art build the obvious apparatus. The ex-post analysis is a yet another complex problem which appears to have been discussed more in the literature than in cases from the Board of Appeal at both EPO and USPTO. The argument of ex-post analysis appears to be invariably raised to reverse a decision to deny inventive step - the Board of Appeal giving little, if any, explanation thereof. In order to diminish the risk of patent over-issuance the United States of America Supreme Court in a landmark decision in KSR has opted for a more flexible approach with regard to the ability of the person skilled in the art to combine known elements in the art thus arriving at the claimed invention. At EPO level there are a number of guidelines aiming to provide support in the assessment of inventive step but as it may be concluded from the cases presented in this thesis the question of how to assess the inventive step still remains a question of subjective approach. It emerges from the description of this thesis that the assessment of inventive step is not always predictable or objective despite efforts to contrary. This may suggest that there is a need for reform. A possible way to overcome these deficiencies is to renounce the prerequisite inventive step and to introduce a system similar to the copyright or design where the absolute right to the apparatus changes to a relative right when faced with a similar but independent created apparatus.