Obviousness and Inventive Step

The problem-solution approach provides a European inventive-step framework and maps some of that reasoning to U.S. obviousness analysis. It toggles between technical features and technical effects, and the non-obviousness of claimed subject matter is based only on technical effects derivable from the specification.

This topic focuses on whether the skilled person would have expected the claimed approach to succeed at the relevant time, not merely whether the path was worth trying. Although the definition of "reasonable expectation" is somewhat vague, the case law makes clear that a certainty of success is not required. All that is required is a reasonable expectation of success.

The raw materials collect a large set of objective considerations, sometimes called secondary indicia, such as commercial success, long-felt need, copying, synergy, expert skepticism, and near-simultaneous invention. To be considered in the obviousness analysis, these considerations must demonstrate a "nexus" between the evidence and the claimed invention. Graham v. John Deere Co., 383 U.S. 1 (1966).

This topic captures a narrower set of factors for diagnostic inventions, especially in European analysis. Under the EPC, methods of diagnosis practiced on the human or animal body are excluded from patent protection, and specific criteria determine when that exclusion applies.