Table 1 – List of patentability requirements
The novelty requirement is simple to explain and to evaluate: an
invention is new when it differs from the prior art. Not much difference
is required; a simple difference is sufficient. [1]
The inventive step is more subjective but the Problem and Solution
Approach (PSA), provided by the EPO, can help to complete this task.
The first step is to establish the differences between the invention and
the prior art. Then, given those differences, one should ask: would an
ordinary skilled technician have been motivated to modify or combine
teachings of the prior art in a manner that would arrive at the claimed
invention? If the answer is yes, then the technical solution is
considered to be obvious in the light of prior art and it is not an
inventive step.
The inventive step hurdle can be easily explained with an example.
Suppose we evaluate an invention which claims an alloy composition ABC
for use as a corrosion-resistant material in devices exposed to saline
environments.
Two documents (D1 and D2) constitute the prior art.
Document D1 describes an alloy ABD having good corrosion resistance
(without specifying that it functions in saline environments). The
difference is the substitution of C with D in the alloy.
Document D2 discloses a composition suitable for use in the manufacture
of boat hulls and comprising B alloyed with C, D or E.
D2 teaches that the elements C and D may be mixed with AB, whereas C, D
and E are elements which may be interchanged with B.
Therefore, a person skilled in the art would be motivated to replace
element D with C or E to obtain a good resistance to corrosion in a
saline environment.[3]