(The original Italian version is published on Diritto24 – Il Sole 24 Ore)

A dispute concerning patent infringement recently brought the Milan Court (Business Chamber “A”) to apply the so-called “problem and solution approach” in assessing the inventive step of the invention at issue. In the judgment that defined the dispute (no. 15057/2014 of 17 December 2014), the Court explained this approach borrowed from the “Guidelines for Examination” applied by the European Patent Office in assessing patent applications (the “EPO Guidelines”).

The “problem and solution approach”, the Court notes, is used to check whether an invention meets the inventive step required by art. 48 of the IP Code for the patent to be valid. According to this rule, “an invention is considered as involving an inventive step if, for a person skilled in the art, the invention is not obvious from the prior art“. The “problem and solution approach” is therefore a method to assess whether, for a person skilled in the art, the invention is obvious from the prior art.

Using this method, the Court continues, to verify whether the invention involves an inventive step, the “closest prior art” must first be determined, “identifying the prior art that is the most promising starting point for a development leading to the invention at issue, which normally has the greatest number of features in common with the claimed invention, or which requires the minimum modification to arrive at the claimed invention“.

After that, one should detect the features distinguishing the claimed invention from that prior art (the “distinguishing features”).

Then, one must identify the “objective technical problem” solved by the distinctive features of the invention and the skills of the skilled person, to check whether the same, starting from the closest prior art, would have solved the objective technical problem in an obvious way, and would therefore have come trivially to the claimed invention, possibly by combining the teachings of the closest prior art with another different prior art or with the general teachings of the technical field of the claimed invention”.

In this last regard, the Court states, in order to understand what the skilled person would do, the “could/would approach” should be used, which also comes from the EPO Guidelines. In other words, “it should be verified whether combining such prior art would be logically and almost certainly decided ​​by the skilled person (“would”), at the date of filing/priority of the patent at issue, or if the skilled person merely could make this combination (“could”), without actually having any incentive to put it in place“. As specified by the EPO Guidelines, in fact, only where the closest prior art contains an incentive for the skilled person — faced with the technical problem — to arrive at the new invention, the latter lacks inventiveness.

Furthermore, the Court states, “the combination of two pieces of prior art, namely the one identified as the closest prior art along with another, different prior art, is logically permissible, to determine the presence or absence of inventive activity in the claimed invention under examination, only if the prior art to be combined, including the common general knowledge in the field, belong to the same sector of the technique; and if it is likely that the skilled person would combine the prior art when searching for a solution to the aforementioned “objective technical problem”, therefore if there is some logical connection between the prior art to be combined, such as the resolution of an identical technical problem in a similar physical context, or even the presence of hints or pointers to solutions present in other known prior art, which drives the skilled person to look in a prior art different from the closest prior art for the solution to the technical problem identified in the patent concerned“.