Subjectivity of appraisals of inventive step in patent examinations as an element of uncertainty in the potential for technological innovation

Abstract

How likely is an invention to turn into an innovation in the short, medium, and long term? Do patent examiners have the power to influence the direction technology takes in a given sector or industry? This study discusses possible impacts arising from the interpretation of the concept of inventive step on the potential for innovation in the electricity area. It also aims to identify any indications of subjectivity in the concept of “inventive step,” of the examiners’ decision-making power, and the influence of the examiners’ evaluations on the direction of technology in the light of the concepts of conformity of action by agents to institutional rules and room for deviation as proposed by Dequech (2013). A case study is presented, comparing the content of first instance examinations and appeal examinations of patent claims in the area of electricity from 2015 to 2017, showing the levels of divergence in the appraisals of inventive step and recommendations for initial decisions to be reversed.