/ Patents: Must an Invention Involve an Advantage Over What is Already Known?

The development and industrial protection of innovations should not be inhibited by the fact that they are not advantageous. It is enough that they are novel, and that they present non-obvious, correctly supported differences with respect to what is known, which allow them to solve a certain problem in a different way.

Matías Saavedra
Patent Engineer
Alessandri Abogados

It is often thought that for an invention to be patentable it must surpass what already exists. In other words, the invention in question must generate better results, be more efficient or more effective. The good news is that this is not the case. The bad news is that this belief tends to inhibit the generation and development of industrial property for many inventions that are not an improvement over what is known. Moreover, it can discourage the implementation of innovative projects in various fields and contexts, both at the level of individuals, private companies, research and development centers, universities, public sector, among other instances of knowledge generation and/or business.

To address this issue, it is necessary to define what an invention is in terms of industrial property and what are the requirements to be patentable. Pursuant to Article 31 of the Industrial Property Law 19,039, “an invention is understood as any solution to a technical problem that originates an industrial activity”. To be patentable, an invention must be different from what is already known (novelty requirement), such differences cannot be obviously derivable by a person normally skilled in the art (inventive level requirement) and it must be useful to solve an industrial problem (industrial application requirement).

From the above, it follows that there is formally no substantial patenting requirement linked to the level of performance of an invention. When an invention fully complies with the requirements of novelty and inventive step, presenting clear and non-obvious differences with respect to what is known, and demonstrates the solution of a practical problem, its level of performance or effectiveness do not constitute relevant elements to evaluate its patentability. As it usually happens, there are some exceptions to the rule, in which the performance or function of an invention becomes important for its patentability. This happens, for example, with a specific subgroup of inventions called “selection” and “new uses”. However, patents of this type represent particular situations.

In line with this, the National Institute of Industrial Property (INAPI) explicitly recognizes, through the concept of “alternative solutions”, the independence of the patenting potential of an invention with respect to its level of performance.

According to INAPI, in the latest version of its Patent Examination and Registration Procedure Guidelines, published on November 2, 2022, an alternative solution is one that achieves the same result as the prior art, without showing that there is any obvious advantage. An alternative solution is patentable as long as it complies with the formal patenting requirements, and does not constitute a mere technical equivalent, i.e. does not perform the same function, and with the same effect or result as a known element or means.

As an example, let us consider the case of a new antiviral drug developed by a pharmaceutical company. This drug has an antiviral effect comparable or similar to that of other known antiviral drugs, both in the literature and on the market. However, it is a molecule with a chemical structure very different from that of known antivirals, and whose characteristics have not been associated with antiviral functions in the past. This drug could fully comply with patenting requirements, and be eligible for industrial patent protection, without showing particular advantages or increased efficacy. It would be a patentable alternative solution that could enter markets and increase the supply, variety and availability of antiviral solutions.

When formulating and designing a patent application, it is very important to identify whether the invention in question constitutes an alternative solution. In the absence of differences in terms of performance with respect to the state of the art, it is necessary to place special emphasis and support on the differentiating characteristics of the invention. This may mean designing and executing rigorous and sufficient characterization tests before formally applying for a patent right, having in view and as a reference the closest state of the art.

The development and industrial protection of innovations should not be inhibited by the fact that they are not advantageous. It is enough that they are novel, and that they present non-obvious differences, correctly sustained, with respect to what is known, which allow them to solve a certain problem in a different way.