"Inventive Step"

Jane Lambert

 







20 Nov 2025

Art 27 of the  Agreement on Trade-Related Aspects of Intellectual Property Rights ("TRIPS") requires countries that are party to the Marrakesh Agreement Establishing the World Trade Organization ("the WTO Agreement") to make patents "available for any inventions, whether products or processes, in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial application."  A footnote to that article states that for the purposes of that provision, the terms “inventive step” and “capable of industrial application” may be deemed by a member state to be synonymous with the terms “non-obvious” and “useful” respectively.

Implementation

There is a similar requirement in art 52 (1) of the European Patent Convention:
"European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application.
The requirement is implemented in the United Kingdom by s.1 (1) of the Patents Act 1977. That lists the conditions for the grant of a patent, which includes a requirement that the invention involves an “inventive step” (s.1 (1) (b)). S.3 of the Act provides that an invention shall be taken to involve an inventive step if it is not obvious to a person skilled in the art, having regard to any matter which forms part of the state of the art by virtue only of s.2 (2) and disregarding s.2 (3) above.  For the meaning of the expression "state of the art", see my article on novelty.

Windsurfing/Pozzoli Test

The Court of Appeal has developed the following methodology for determining whether or not an invention is obvious in Windsurfing International Inc v Tabur Marine (Great Britain) Ltd. [1985] RPC 59 and Pozzoli Spa v BDMO SA and Another [2007] BusLR D117, [2007] 1 Bus LR D117, [2007] Bus LR D117, [2007] FSR 37, [2007] EWCA Civ 588 which the Supreme Court approved in Actavis Group PTC EHF and others v ICOS Corporation and others [2019] UKSC 15, [2019] RPC 9, [2019] Bus LR 1318, (2019) 167 BMLR 1, [2020] 1 All ER 213:
“(1) (a) Identify the notional ‘person skilled in the art’;
(b) Identify the relevant common general knowledge of that person;
(2) Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;
(3) Identify what, if any, differences exist between the matter cited as forming part of the ‘state of the art’ and the inventive concept of the claim or the claim as construed;
(4) Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?”
Lord Justice Jacob applied this methodology in Pozzoli between paras [30] and [66].  The Supreme Court described the fourth question as "the statutory question" and the first, second and third as "a means of disciplining the court’s approach to that fourth question."

Problem-Solution Test

In T-939/92 AgrEvo/Triazoles [1996] EPOR 171, the Technical Board of Appeal applied a slightly different test at para 2.4.3 of its decision:
“the Boards of Appeal consistently decide the issue of obviousness on the basis of an objective assessment of the technical results achieved by the claimed subject-matter, compared with the results obtained according to the state of the art. It is then assumed that the inventor did in fact seek to achieve these results and, therefore, these results are taken to be the basis for defining the technical problem (or, in other words, the objective) of the claimed invention. … The next step is then to decide whether the state of the art suggested the claimed solution of this technical problem in the way proposed by the patent in suit …”
Further Information

Cases applying those principles and relevant articles are listed below, and these will be updated from time to time. Call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact page for more information.

Case Law

Articles

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