Inventive Step Analysis in FD4
There are usually a lot of marks for doing a good inventive step analysis during the FD4 exam, and the method for performing the analysis is very simple. You should just be able to plug in the relevant facts and turn the handle. The inventive step analysis under UK law is the Windsurfer/Pozzoli test. This four-step test is supposed to provide a structure for analysing inventive step in an objective way. For those who are new to the profession, or otherwise need a refresher, the four-step test is as follows:
(1) Identify the notional “person skilled in the art” and their relevant common general knowledge;
(2) Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;
(3) Identify what, if any, differences exist between the matter cited as forming part of the “state of the art” and the inventive concept of the claim or the claim as construed;
(4) Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?
If you want more information on each of the four steps, the MoPP (3.13 onwards) has a fairly good run down of each step (here).
How to approach Inventive Step in the FD4 examination
Approach it much like real life. You need to first establish the relevant date for assessing inventive step (and novelty, if you’ve not already done it). You can see from the 2024 exam mark scheme that marks were awarded for this. Once you have the relevant date, decide what is prior art. Check the dates of each document to ensure it can be cited.
Things to remember when applying each of the four steps are as follows.
Step 1: PSA and their CGK
Remember that the PSA can be a team, and different claims might have a different PSA. Really think about who this person would be, and what level they would be within the context of the field. When it comes to CGK, remember that the background section of the patent specification may be an area where this is disclosed, as was the case in 2024.
Step 2: The inventive concept
Identify the inventive concept, and provide clear basis or reasoning if it is available in the specification. In the recent examiner’s report, it was reiterated that the concept is not merely the underlying problem, nor is it the patentee’s aim. Lord Walker provided a summary of the concept in Generics v Lundbeck (here).
““Inventive concept” is concerned with the identification of the core (or kernel, or essence) of the invention—the idea or principle, of more or less general application (see Kirin-Amgen [2005] RPC 169 paras 112-113) which entitles the inventor’s achievement to be called inventive. The invention’s technical contribution to the art is concerned with the evaluation of its inventive concept—how far forward has it carried the state of the art? The inventive concept and the technical contribution may command equal respect but that will not always be the case.”
Remember under UK practice, the inventive concept is derived in ignorance of the prior art. This is very different to practice under the EPO’s ‘Problem-solution’ approach.
Step 3: Differences between the concept and the art
What have they achieved over what was known? Remember this is the concept vs. the art. Sometimes this might be the inclusion of a specific feature, sometimes it isn’t. You must refer to your concept. In the most recent examiner’s report, it was clear that many candidates were approaching inventive step in a ‘Problem-solution’ type of approach, which is not correct for the FD4 exam.
Step 4: Is it an obvious step to take?
Is there anything to suggest this is a mere routine or obvious step that the skilled person would take? Is there anything to suggest it isn’t? Form your arguments rationally, and use any facts available to you if they are given.
Other things to consider
Many of us probably do way more EP work than direct GB work. As a result, slipping into EP practice is an easy and comfortable thing to do. You must avoid doing so to get the marks you need in FD4. Under UK practice, documents are not regularly combined in the way they are under the Problem-solution approach, for example. The MoPP has a good rundown on this in section 3.40.
The other thing you must remember to do is to evidence your claims as much as is possible. A point-evidence-comment structure to your answer might work for you as you turn the handle.
