Inventive step

In most countries, in addition to the technical nature and industrial application of the invention, there are two criteria for grant and validity of a patent: novelty, an objective criterion, and inventive step, a subjective criterion.

Until 2020, France was an exception in the global industrial property landscape, since inventive step was a condition for the validity of a granted patent, but not a condition for grant. The main contribution of the PACTE Act of 2020 is the inclusion of the criterion of inventive step as a condition for grant.

As in the case of European patent applications examined by the European Patent Office (EPO), the problem-solution approach is usually used in France to assess inventive step, and typically comprises five stages:

1 - determination of the state of the art closest to the claim under examination;

2 - determination of the differences between the claimed invention and the closest prior art;

3 - determination of the technical effect of these differences;

4 - formulation of the objective technical problem solved by the invention on the basis of the technical effect; and

5 - assessment of the inventive step, i.e. the chances that a person skilled in the art, knowing the state of the art and the objective technical problem, would arrive at the invention without any particular inventive effort.

Other countries, notably China, use an approach similar to the European approach for assessing inventive step.

The foreseeable consequence of taking inventive step into account as a criterion for grant of a patent is that the grant procedure for a French patent is longer and more complex. Examining inventive step in order to grant a patent makes it more necessary than ever before to carry out a more thorough prior art search and patentability study prior to filing, in order to more accurately assess the chances of the invention meeting the inventive step criterion.

When drafting the application, care should be taken to indicate an expected technical effect for each of the technical features, so that the inventive step can be discussed more easily during the grant phase, or in the event of litigation.

On receipt of the preliminary search report, if the study of the cited documents does not fundamentally change, a more detailed argument discussing the inventive step should be prepared and filed.

In the event of an unfavourable preliminary search report on the inventive step criterion, it may be possible to convert the patent application into a certificate of utility application (10-year term, guaranteed grant) in order to obtain a granted title. In this case, the conversion period must be carefully monitored (18 months from the filing date or earliest priority date if priority is claimed). The advantage here will be in having a title granted. However, as the conditions for the validity of a patent and a certificate of utility are identical, a certificate of utility resulting from the conversion of a patent application lacking in inventive step will not be enforceable in court against an infringing third party.

Finally, it should be emphasised that the tougher conditions for granting patents will mathematically lead to a higher percentage of rejected patent applications. In the event of disagreement with the opinion of the INPI examiner, the only remedy will be, in the absence of a second-level body within the INPI, to lodge an appeal against the INPI's decision with the Paris Court of Appeal, at greater expense and complexity than the usual administrative procedure before the INPI.

The PACTE Act of 2020 also introduced a new opposition procedure for granted patents. For a period of nine months from the date of grant of a French patent, third parties may file an opposition to the patent in an attempt to revoke the granted patent or at least reduce its scope. The criterion of inventive step is also widely debated during this opposition procedure.

It should be noted that in the USA, for example, the subjective criterion of patentability equivalent to inventive step is called non-obviousness and is defined by Article 35 USC 103. The American approach is different from the European approach and is more akin to an examination of foreseeability than an examination of obviousness. American practice is a test-based approach (e.g. TSM (Teaching-Suggestion-Motivation)) test derived from case law (Graham v. John Deere Co, KSR International), whereas the European problem-solution approach is more objective for assessing the corresponding inventive step criterion.