According to experts, assessment of inventive step is one of the most difficult issues of substantive examination. But before we touch on this topic, it is important to understand what an “inventive step assessment” is and why it is needed.
Inventive step is a necessary condition for the patentability of an invention. It is this that indicates the presence of distinctive features of a unique technical solution from currently existing knowledge and experience, which can be a serious basis for recognizing its patentability. In the future, this can provide the invention with not only high competitive conditions in the market, but also serve as a powerful trigger for the effective development of the company, easier adaptation to current changing external conditions, expansion of contacts and the creation of new promising platforms for the development of new innovative technologies.
Assessment of inventive step allows us to identify important differences between the invention claimed for patenting and the current state of the art in order to identify non-obvious features in the invention.
When analyzing the claimed technical solution, experts first determine the presence of the closest analogue, as well as the differences and similarities of the identified features of the new technical solution and its prototype. An analysis of the presented distinctive features from the prior art is carried out to determine the known impact of their influence on the technical result (invention) declared by the authors.
The definition of “state of the art” for assessing inventive step correlates with the concept of “state of the art” for identifying novelty. However, when establishing inventive step, a different analysis technique is used.
If novelty is a new set of essential features, assessed by a specific analogue included in the level of technology, then inventive step is the determination of the obviousness of the application of the features of the invention to achieve a technical result.
For example, in the treatment of hypertension, drug A is used, consisting of components “b”, “c”, “k”. Based on the level of technology, we know that each of the components “b” and “k” individually has a hypotensive effect. In this case, the “c” component is auxiliary (for example, water). In this regard, we cannot recognize the patentability of this drug, since in this case there is no inventive step, since it is obvious that these components are used for the treatment of hypertension, that is, to achieve a technical result (the technical result in this case is the creation of a drug for the treatment of hypertension).
But if we can use these components to treat, for example, gastritis, which is unknown from the prior art and affects the achievement of a technical result, then in this case there is an inventive step and the invention can be considered patentable, since the use of these components for the treatment of gastritis is not obvious.
It must be remembered that when checking the inventive step, the level of technology does not include sources with publicly available information about the invention disclosed by the author or any person who received this information from the applicant if the application for the invention is filed with Rospatent no later than six months, starting from the date of disclosure of the information.
Thus, checking the inventive step of a new technical solution is the most important part of the substantive examination and serves as the basis for a conclusion about its patentability.
