ICC POLICY STATEMENT

ICC Comments on the Inventive Step Criterion for Patenting

With its broad membership including not only intellectual property rights holders but also third parties affected by others’ intellectual property rights, ICC understands, and has always supported, the need for a proper balance among different interests.

With its broad membership including not only intellectual property rights holders but also third parties affected by others’ intellectual property rights, ICC understands, and has always supported, the need for a proper balance among different interests.

In the field of patents, for example, the system should allow those who innovate and invent to obtain and enforce rights protecting their inventions, but should also ensure that society as a whole benefits, for example from disclosure of inventions and the dissemination of knowledge. In other words, the interests of third parties must be balanced against rights provided to inventors. In the view of ICC, maintaining this balance is necessary for the continued successful operation, and general acceptance, of intellectual property protection systems.

The criteria for patentability are clear. Patents are available for any invention – whether product or process – in any field of technology, provided it is new, involves an inventive step and is capable of industrial application. Only if an innovation meets these criteria, is it entitled to patent protection.

The issue under study in the WIPO Standing Committee on Patents is the criterion of “inventive step”, or “nonobviousness” . To fulfill this criterion, the invention must not have been obvious to a person skilled in the relevant field of the art at the relevant date of the application, taking into account the state of the art available before that date.

However, there is no common definition or understanding around the world on how this criterion should be applied and TRIPS provides no guidance. The precise manner in which it is applied – for example, with respect to the definition of the person skilled in the art – differs from country to country. It even differs over time within the same country.

For example, in the jurisdictions of the so-called IP5 Offices (EPO, JPO, KIPO, SIPO, USPTO), which account for the vast majority of patents in force in the recent past (see e.g. IP5 Statistics Report 20132 ), different definitions exist with respect to the patentability criterion of inventive step.

Ultimately, the provisions in all the IP5 jurisdictions explicitly require assessment of inventive step on the following bases, that is:

  • the prior art3 publicly available before the relevant date of the patent application in the technical field(s) to which the invention pertains, and
  • the ordinary skills of one skilled in the specific field(s) of the art.

As far as these ordinary skills in the art are concerned, the respective guidelines for patent examination of the IP5 Offices also provide reasonable guidance.

It can be seen from these guidelines that all IP5 offices apparently base the decision on inventive step on the knowledge of a fictional person skilled in the art who is presumed to

  • be aware of all information that was available to the public in the technical field(s) of the invention on the day before the relevant date of the patent application, and
  • have the capacity to apply all the routine means in the technical field(s) of the invention on that specific day.

ICC welcomes this general convergence in the principles applied by the IP5 offices and agrees with these. ICC further notes the following:

  • Inventive step should be established based on the relevant prior art, namely the information that was available to the public in the technical field(s) of the invention on the day before the relevant date of the patent application
  • Neither the legal requirements for inventive step nor any other basic criteria make any distinction between different levels of invention – for example between “incremental” and “radical” or “breakthrough” inventions. Hence, any claim should be judged against the same basic principle, namely the question: what would one ordinarily skilled in the specific field have done on the relevant day? With such an approach, improper assessment in hindsight can be avoided. In any case, assessment should not depend on subjective determinations of whether an invention is “radical”, “incremental” or otherwise.
  • While ordinary skill clearly depends on the specific field of technology, the principles of evaluation of inventive step should not depend on the subject matter, i.e. the same basic rules should be applied irrespective of the field of the invention
  • To the extent that genuine concerns about patent quality exist, they relate to the whole range of technology. If a claim fails to meet the fundamental criteria set out above, a patent should not be granted. Where a patent has wrongly been granted, offices and courts should continue correcting those errors; all as part of international efforts to ensure that an appropriate balance is achieved between all entities affected by patents
  • The use of criteria extraneous to the above basic rules for the determination of inventive step creates uncertainty and lack of predictability both at the national and the international level, especially when patent applications are filed in several jurisdictions