Written commercial agreement

Significant imbalance

Sudden termination of established relationships

Competition investigation – French law

Civil competition action

French competition law

Competition investigation – European law

European competition law

Vertical restraints

Distribution law

Liability for defective products

Consumer law

Prohibition of measures having equivalent effect

European business law

Corruption

Compliance

Economic law

Shareholders' agreements

Removal of company directors

Abuse of voting rights

Companies

Action for infringement (counterfeiting)

Rights conferred by the trademark

Patentability

Industrial property

Commercial rent review

Renewal of the commercial lease

Despecialization (change of use)

Commercial leases

Reform of contract law

Reform of the law of special contracts

Preliminary sales agreement

Obligation to deliver goods in conformity

Classification of the contract for services (contrat d'entreprise)

Effects of the agency agreement with respect to third parties

Business contracts

Ongoing contracts

Recovery claims

Court-approved transfer plan

Bankruptcy proceedings

Personal data breaches

White collar crime

Commercial law

500 Questions - Business Law

The inventive step is measured, like novelty, against the state of the art, which includes the body of relevant knowledge and information in a given technical field that has been made accessible to the public before the filing date of the patent application or the priority date. However, unlike the assessment of novelty, French patent applications or European or international patent applications d …

What does the concept of the state of the art, used to assess inventive step, encompass?

For an invention to be patentable, it must be novel, meaning it must not be included in the prior art at the time of filing (Art. L. 611-11 IP Code). An invention belongs to the prior art if the public has access to its description in a manner sufficient to understand it and has the technical information necessary for its implementation . The fact that the invention is, prior to its filing, in the personal possession of a third party to the applicant does not constitute sufficient disclosure .

For an invention to be included in the state of the art and deprived of novelty, it must have a complete prior disclosure . The alleged prior disclosure must enable a person skilled in the art to reproduce the invention as provided by the claims of the contested patent . For the assessment of novelty, it is not sufficient to limit oneself generally to the content of a single document: each entity described therein must be considered in isolation . Prior disclosure destroys novelty even if, from a technical point of view, it is incidental, i.e. unrelated and so dissimilar to the invention claimed  that a person skilled in the art would never have given it consideration when when realizing the invention.

The disclosure of a patent requires that the information made available to the public enables a person skilled in the art to carry out the invention, which is not the case for documents that do not provide the technical information necessary for this implementation.

Cass. com, 4 January 1994, LawLex202200010618JBJ.

The fact that the invention was in the personal possession of a third party prior to its filing does not suffice to establish disclosure in the absence of sufficient publicity.

Cass. com., 15 June 1965, LawLex202200001826JBJ.

To be considered part of the prior art and deprived of novelty, the invention must be entirely found in a single prior art with a certain character, with the same elements that constitute it, in the same form, the same arrangement, and the same operation for the same technical result.

CA Paris, 12 January 2016, LawLex202200000691JBJ.

Courts cannot dismiss as prior art the plan of a cheese mold device without determining whether this plan allows a person skilled in the art to produce the mold as provided for in the claims of the contested patent, without being combined with other elements.

Cass. com., 18 December 2001, LawLex202200001469JBJ.

To destroy the novelty of a claim, it must be found in its entirety in a single prior art with a certain character, with the same elements that constitute it, in the same form, the same arrangement, and the same operation for the same technical result, the prior art must be taken as it is without adding to or completing it.

CA Paris, 6 January 2006, LawLex202200002125JBJ.

In what cases can an invention be classified as novel?

The disclosure of the invention does not destroy its novelty when it occurs within six months preceding the filing date of the patent application or in the case of publication, after the filing date, of a prior patent application, if the disclosure results directly or indirectly from an abuse or an official exhibition (Art. L. 611-13 IP Code). When the disclosure results directly or indirectly from an evident abuse towards the inventor or their legal predecessor, it does not constitute a novelty-destroying disclosure . When the disclosure results directly or indirectly from the presentation of the invention at an official or officially recognized exhibition, it also does not constitute a novelty-destroying disclosure .

Advice: Ensure the confidentiality of exchanges related to the invention.

The disclosure of the invention made in violation of a confidentiality agreement cannot be validly considered as prior art for the filed patent.

Cass. 2e civ., 2 November 2011, LawLex202200001012JBJ.

Disclosure during an exhibition constitutes an exception to the general rule of assessing novelty.

Cass. com., 13 December 1988, LawLex202200001819JBJ.

Can the disclosure of the invention destroy its novelty?

In addition to being novel, the invention, to be patentable, must involve an inventive step (Art. L. 611-10, 1° Intellectual Property Code), i.e. for a person skilled in the art, it must not obviously stem from the prior art (Art. L. 611-14 Intellectual Property Code) .

Inventive activity and novelty are distinct criteria. However, the question of inventiveness arises only if the invention is novel. The lack of an inventive step renders the patent invalid .

Advice: Do not confuse inventive activity with novelty, even though one does not exist without the other.

A combination does not fall under prior art when the claimed invention does not obviously result from the state of the art.

Cass. com., 15 February 1983, LawLex202200001084JBJ.

If a person skilled in the art can, based on the teachings of two prior uses, arrive at the combination of features covered by the claim without exercising an inventive step, the claim must be invalidated.

CA Paris, 5 June 2009, LawLex202200009865JBJ.

What is meant by inventive step?

The inventive step of the invention depends on the subjective judgment of the person skilled in the art to whom the technical problem solved by the invention is presented. The person skilled in the art possesses the usual  knowledge of the relevant technology and is capable, using only their professional knowledge, of conceiving the solution to the problem . They are normally competent in the industrial discipline  and possess the technology that the invention resolves . The relevant technical field to be referred to includes, in addition to the field covered by the application, the state of the art in a related field where identical or similar problems arise to those encountered in the specific field covered by the application and that the skilled person should normally know . Thus, to assess the inventive character, the person skilled in the art may refer to a document from a neighboring technical field, provided that it describes a starting situation similar to the one the inventor faced .

The person skilled in the art may consist of a team of professionals, even from different specialties. In this case, the knowledge of the person skilled in the art encompasses all the distinct general knowledge attributable to those professionals. The person skilled in the art is presumed to have access to all elements of the state of the art.

The person skilled in the art is one who possesses the normal knowledge of the relevant technique and is capable, using only their professional knowledge, of devising the solution to the problem that the invention proposes to solve.

Cass. com., 17 October 1995, LawLex202200001325JBJ.

The person skilled in the art is defined as the person normally competent in the industrial field to which the technical problem solved by the invention pertains.

CA Paris, 3 July 2013, LawLex202200001060JBJ.

The person skilled in the art concerned with the technical problem solved by the invention, regardless of the field of application of the technique, is the one who possesses the technique that the invention resolves.

Cass. com., 15 November 1994, LawLex202200001940JBJ.

A person skilled in the art, defined as a technician with knowledge in mechanics applied to building equipment, cannot be expected to know the state of the art in the field of furniture.

CA Paris, 18 May 2005, LawLex200500009065JBJ.

The person skilled in the art may, to assess the inventive step of an invention, consult a document in a neighboring technical field that presents a starting situation similar to that in which the patent inventor finds themselves.

Cass. com., 24 April 2024, LawLex202400003356JBJ.

Inventive step assessment - What is the definition of a person skilled in the art?

The inventive step is measured, like novelty, against the state of the art, which includes the body of relevant knowledge and information in a given technical field that has been made accessible to the public before the filing date of the patent application or the priority date. However, unlike the assessment of novelty, French patent applications or European or international patent applications designating France, which have not been published by the filing date of the patent application, are not considered in the state of the art (Art. L. 611-14, para. 2, Intellectual Property Code). The state of the art also includes the connections or combinations of prior documents that a person skilled in the art could make.

An abstract, the content of which is incorrect and does not correspond to the patent specification - the documents having been published on the same day - cannot be considered part of the prior art.

Cass. com., 12 March 2002, LawLex202200002729JBJ.

The invention must not be obvious to a person skilled in the art based on the prior art . They must be required to make an inventive effort to achieve the result claimed in the patent.

Obviousness refers to what clearly and logically follows from the prior art and does not require any particular qualification for the person skilled in the art . It is characterized when the invention requires no more than the exercise by the person skilled in the art of their professional skills as a practitioner and the use of the teachings of the state of the art .

A claim evidently arises from the state of the art when no technical difficulty would prevent a person skilled in the art from referring to a prior use and adapting it to the structure described.

CA Paris, 30 June 2006, LawLex202200002112JBJ.

An invention is considered to be within the prior art if the application described in the patent is already encompassed by the prior art and does not require the skilled person to engage in any step that is not obvious from the prior art.

Cass. com., 3 May 1978, LawLex202200001890JBJ.

The prior art does not make the invention obvious to a person skilled in the art when the examination of both the opposed patents and prior manufacturing or advertising disseminated by the holder of the exploitation license reveals no disclosure of the features that are the subject matter of the patent claims.

Cass. com., 8 April 2008, LawLex202200003329JBJ.

An invention for which there are prior documents which, when taken together demonstrate that the invention could have been made without requiring more than the exercise by a person skilled in the art of their professional skills and the use of the teachings of the prior art, lacks inventive step.

CA Paris, 24 January 2017, LawLex202200010923JBJ.

Does the obviousness of the invention constitute an obstacle to inventive step?

The inventive step is assessed as of the patent filing date, by comparing the characteristic elements of the invention with the prior art . To establish the existence of an inventive step, the trial courts use the set of indicia (méthode du faisceau d'indices) or the problem-solution approach, or both methods applied cumulatively:

Set of indicia methoda: Indicators of inventive activity include the novelty of the problem at hand, an overcome prejudice, or a surprising or unexpected result . It is necessary and sufficient that the prior art does not teach the skilled person how to solve the problem posed or does not lead them towards the invention . If the improvement made to an invention logically follows from the state of the art, the patent lacks inventive activity .

Problem-solution approach: to assess inventive activity in an objective and predictable manner, the courts may use the problem-solution or could-would approach, which unfolds in three steps. It involves determining the closest prior art , establishing the objective technical problem to be solved, and then examining whether the claimed invention, starting from the closest prior art and the objective technical problem, would have been obvious to a person skilled in the art .

The trial courts, which have discretionary authority to assess whether or not there is an inventive step, are required to provide reasons for their decision .

Advice: Challenge any decision dismissing the inventive step if it is not sufficiently reasoned.

define precisely who is regarded as a person skilled in the art;

carry out the effective comparison of the characteristic elements of the invention with the prior art;

Courts cannot merely state that the claims of the patent were, at the date of its filing, within the reach of anyone and that the essential characteristic of the invention was obvious to a person skilled in the art, without comparing the characteristic elements of the invention to the state of the art at the date of filing of the patent.

Cass. com., 15 June 1993, LawLex202200001987JBJ.

The invention that could have been made without requiring more than the exercise by the skilled person of their professional capabilities as a practitioner and the use of the teachings of the state of the art, and which does not contravene any prejudice, does not show any break from the taught methods, does not solve any technical difficulty, and does not provide any surprising or unexpected result, lacks inventive activity.

CA Paris, 27 September 2016, LawLex202200010929JBJ.

Documents from the prior art combined together cannot lead the skilled person, without demonstrating inventive step, towards the invention, as long as none of the documents suggests implementing the combination of means claimed by the patent in question.

CA Paris, 24 October 2007, LawLex202200002116JBJ.

The invention lacks an inventive step when the process of achieving the invention naturally appears to derive for the skilled person from the claimed features, which rationally require only a simple adaptation of implementation through the performance of operations and the mere application of their knowledge of the prior art.

CA Paris, 13 January 2015, LawLex202200010926JBJ.

The closest prior art to be selected for assessing inventive step must be relevant, meaning it should correspond to a similar use and require the fewest structural and functional modifications to achieve the claimed invention, and therefore, aim to achieve the same objective, obtain the same effect as the invention, or at least belong to the same technical field as the claimed invention or to a field closely related to it.

It is evident to a person skilled in the art to combine the teachings of three patents to arrive at the main claim and the dependent claims of the contested patent, as long as the examination of the prior art reveals that, in addition to the three prior patents, it results from the teachings contained in a physics and chemistry manual.

Cass. com., 4 January 1994, LawLex202200003385JBJ.

The ruling bases its assessment of inventive step not only on the process of manufacturing the product but also on the product itself, noting that in order to define it and implement its production, it was necessary to go beyond the conventional wisdom that led researchers, in order to avoid the phenomenon of intracellular proteolysis, to produce a protein using plasmids that express that protein in a form conjugated to a foreign protein.

Cass. com., 19 December 2000, LawLex202200001348JBJ.

A court of appeal cannot characterize the absence of inventive step solely on the grounds that the elements of the patent in question were separately included in the prior art and that, therefore, their combination did not exceed the competence of a person skilled in the art.

Cass. com., 19 April 2005, LawLex202200010933JBJ.

What are the methods of proving inventive step?

To be patentable, an invention must be capable of industrial application (Art. L. 611-10, 1 Intellectual Property Code). An invention is considered as such if its subject-matter can be manufactured or used in any kind of industry, including agriculture (Art. L. 611-15 Intellectual Property Code). The concept of industry implies the continuous and independent exercise of an activity with a profit-making purpose and covers all human activities, including artisanal, agricultural, and commercial activities. Notably included in the concept of industry are undertakings whose purpose is to beautify the human or animal body, such as beauty salons. However, an invention is not capable of industrial application when its implementation is applied in the private and personal sphere.

What is covered by the concept of industrial applicability essential to the classification of an invention cover?

The condition of industrial applicability (or application) is met as long as the subject matter of the invention is capable of being manufactured or used , even if the invention does not achieve the expected result  or if the result obtained is imperfect .

On the other hand, purely abstract creations, without application in the real world are not capable of industrial applicability. This is the case for scientific results described in a vague or speculative manner, as this would reserve an unexplored field of research for the patent applicant .

To uphold industrial applicability, it is sufficient that the process or device that is the subject of the invention can be manufactured or used in any kind of industry, with development difficulties only revealing an imperfect result. CA Paris, 28 October 2005, LawLex202200002222JBJ.

The condition of industrial applicability is met as soon as the subject matter of the invention can be manufactured, without requiring the achievement of a result.

CA Paris, 17 October 2017, No 03/09989LawLex202200002117JBJ.

The condition of industrial applicability of the invention is met when the object of the invention is feasible, meaning it can be manufactured and used, even if the result obtained is imperfect.

CA Paris, 20 September 2006, LawLex202200002124JBJ.

When a product, considered a drug in its application to combat diseases, is added to animal feed to promote their growth, this addition must be regarded as an industrial application.

Cass. com., 27 November 1978, LawLex202200002118JBJ.

500 Questions - Business Law

324. What does the concept of the state of the art, used to assess inventive step, encompass?

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324. What does the concept of the state of the art, used to assess inventive step, encompass?

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Les décisions de justice citées dans ce paragraphe :

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