The “problem and solution approach” consists essentially the following three steps:
- Determining the “closest prior art”,
- Establishing the “objective technical problem” to be solved, and
- Considering whether or not the claimed invention, starting from the “closest prior art” and the “objective technical problem”, would have been obvious to the skilled person.
For an inventive step to be present, it is not necessary to show any improvement over the prior art. Generally, it is more important to show that there is no recognizable pointer in the prior art which would have prompted the skilled person to solve the “objective technical problem” according to the claimed invention.
In a decision of September 2014 (T 0835/10), the Boards of Appeal had to decide on inventive step where the generally used “problem and solution approach” failed. The concerned European patent application related to a method of using a behavioural synthesis tool to design integrated circuits. The “objective technical problem” in view of the closest prior art was the “need to provide a method for reorganizing an array layout to achieve more efficient memory designs more quickly using customizable design options”. The solution of the “objective technical problem” according to the application was in essence the feature: “allowing a user to modify at least one of the memory allocation constraints via a graphic user interface …” The automated approach of the closest prior art led the skilled person in a completely different direction than the application: a fully automated design optimization is preferable and desirable! According to the established “problem and solution approach”, the claimed invention must therefore be inventive.
However, in the absence of any technical effect (e.g. manual computation and entering of optimisation values would not be quicker than an automatic computation of these values), the Board decided that a half-automated memory allocation design process used to design an integrated circuit cannot be inventive compared with a maximally automated memory allocation design process for the same purpose as disclosed in the closest prior art. The Board stated: “as little as merely automating human behavior is usually considered to be inventive …, the inverse – i.e. ‘deautomating’ or undoing (in a computer-implemented method) the automation performed by a prior art software - cannot in general be considered to be inventive.”
This case is one of the rare cases where the established “problem and solution approach” failed in deciding inventive step under Art. 56 EPC.