I (think I) have an invention — what’s next? Part II: Finding-My-Invention

In the previous blog, we began our “finding-my-invention” journey, exploring the question: Although I’ve done great research, can I actually protect it with a patent? In other words, how do I identify patentable features in my completed or near-complete research? We learned that an invention is patentable if it is both novel and inventive (or non-obvious) compared to existing prior art. In the last blog, which I highly recommend reading, we explored novelty in detail. Now, the natural next step is to understand what inventiveness (or non-obviousness) means and why it is essential for an invention to be patentable.

At this stage, you might be thinking that we’re diving too much into legal details — something an inventor may not be particularly interested in. However, the “finding-my-invention” journey isn’t necessarily a question for patent attorneys. Rather, it serves as a pre-filter for inventors to determine what and when an invention can be protected by a patent. Beyond that, this process also helps refine the invention, making it more suitable for patenting.

Once an inventor comes up with a great idea, the first step, as discussed earlier, is to identify all the technical features and their corresponding effects. In scientific or engineering terms, a technical feature could involve introducing a new configuration, modifying settings, using novel materials, or identifying a new parameter. The effects of these changes might include increased efficiency, enhanced reliability, improved scalability, better safety, cost reduction, or automation. These feature-effect pairs are essential for understanding an invention. Novelty is assessed by comparing these technical features with existing prior art to determine which features are new. Only the novel feature and its corresponding effect (the feature-effect pair) matter for further analysis — any non-novel features are irrelevant. It is important to note that if an invention has no novel features, there is no question of inventiveness. Non-obviousness only becomes relevant once novelty has been established.

Inventiveness goes a step further by assessing whether a novel feature-effect pair is an obvious extension of prior art for someone skilled in the field. For an invention to be considered inventive, it must represent a significant advancement — a creative leap beyond existing knowledge. The novel feature should lead to an unexpected or surprising effect (recall the feature-effect pair). Minor modifications or obvious improvements are generally not considered inventive.

For example, an invention that combines existing features is not considered inventive if the combination is an obvious outcome. A classic example (borrowed from the European Patent Office guidelines) is a machine for producing sausages that simply places a known mincing machine and a known filling machine side by side. This setup merely juxtaposes existing devices that function as expected, without introducing any non-obvious interaction — meaning it lacks inventiveness. On the other hand, consider a mixture of medicines containing a painkiller (analgesic) and a tranquilizer (sedative). Normally, a tranquilizer does not have painkilling effects. However, when combined with the painkiller, it unexpectedly enhances the analgesic effect beyond what could have been predicted from their known properties. In this case, the combination leads to a surprising effect, making the invention inventive.

The key takeaway: A simple combination of known elements is not inventive unless it produces an unexpected, non-obvious result.

Unlike novelty, which is an objective criterion, inventiveness can be subjective. This means there is often room to argue for or against the inventive step of an invention. Moreover, different patent offices assess inventiveness differently. The United States Patent and Trademark Office (USPTO) refers to it as the “obviousness” criterion, whereas the European Patent Office (EPO) uses the term “inventive step.”

The EPO, in particular, follows a structured method called the Problem-Solution Approach to evaluate inventiveness. This approach consists of three key steps: 1. Identifying the “closest prior art” — Finding the most relevant existing technology related to the invention. 2. Defining the “objective technical problem” — Determining what problem the invention aims to solve. 3. Assessing obviousness — Evaluating whether a skilled person, based on the closest prior art and the identified problem, would have arrived at the invention without an inventive leap. This structured assessment helps maintain consistency and fairness in evaluating whether an invention is truly inventive or merely an obvious extension of prior knowledge.

Let’s use a simple example to illustrate the problem-solution approach. Consider the issue of blind spots in a car’s side mirror. Blind spots make it challenging for drivers to see other vehicles, leading to accidents when changing lanes. The proposed invention is a camera-based system with AI that detects cars in blind spots and alerts the driver with a warning light or sound. The first step is identifying a prior art document (or product or public disclosure) that constitutes the most promising starting point for developing the invention. In this case, the closest prior art could be regular mirrors and convex mirrors, which reduce blind spots but do not eliminate them. The next step is formulating the objective technical problem, which could be phrased as: How can we improve a vehicle’s ability to detect objects in blind spots to enhance driver safety and reduce the risk of accidents? The proposed solution is to use cameras and AI to detect nearby cars and provide warnings.

Finally, we assess whether the solution (the feature-effect pair) is non-obvious to a skilled person in the field, considering the closest prior art and the initial problem. In this case, the feature of using cameras and AI, with the effect of enhanced safety and reduced accident risk, can be considered non-obvious. This is because the prior art, such as regular and convex mirrors, does not suggest using AI and cameras to improve safety and reduce accidents. In my next blog, I will provide additional examples to further illustrate the concept of inventiveness. To make it more authentic, I will reference examples from the European Patent Office guidelines.

In summary, the inventive step (or non-obviousness) is a crucial patentability requirement, as relying solely on novelty would lead to an overwhelming number of patents. Patent offices set a high standard for this criterion to ensure that only truly innovative inventions are granted protection. This blog explains the concept of inventiveness (or non-obviousness) in patent law, emphasizing that an invention must show a creative leap beyond prior art to be considered inventive. Using the European Patent Office’s Problem-Solution Approach, it illustrates how to assess whether an invention is truly inventive or merely an obvious extension of existing knowledge.