Hindsight in Determination of Inventive Step: How to Avoid It

What is Hindsight Bias in Patents?

Hindsight bias is the tendency to see events as more predictable after they have already happened. In patent law, hindsight comes into play when examiners or courts, armed with the knowledge of the invention, start reconstructing prior art in a way that makes the invention appear obvious.

For example: Imagine a startup designs a portable water purifier that uses a clever filter arrangement to drastically improve efficiency. Once the invention is on paper, it may seem “obvious” to simply combine known filters in that way. But in reality, before the invention, nobody thought of it, even though the components existed.

The legal risk: If hindsight bias creeps into the assessment, an otherwise deserving invention may be unfairly rejected as lacking inventive step.

Why Avoiding Hindsight is Critical

Hindsight undermines the fairness of the patent system. If every invention can be dismissed as obvious after it is revealed, innovators will lose the incentive to invest time and resources in developing new technologies.

That’s why courts and patent offices worldwide—from the EPO (European Patent Office) to the USPTO (United States Patent and Trademark Office) and Indian Patent Office—have developed structured tests to minimize hindsight in inventive step determinations.

How Different Jurisdictions Handle Hindsight

1. European Patent Office (EPO) – The Problem-Solution Approach

The EPO relies heavily on the Problem-Solution Approach (PSA), specifically designed to avoid hindsight. The PSA has three stages:

1. Identify the closest prior art.

2. Define the objective technical problem to be solved.

3. Ask whether, starting from the prior art, the skilled person would have found the claimed solution obvious without knowing the invention.

This framework helps ensure the examiner isn’t reconstructing the invention backwards, but rather evaluating it from the perspective of the skilled person at the time.

2. United States – Graham Factors & KSR Ruling

In the U.S., the Graham v. John Deere decision set out four factors:

• Scope and content of prior art

• Differences between prior art and claims

• Level of ordinary skill in the art

• Secondary considerations (commercial success, long-felt need, etc.)

The later KSR v. Teleflex ruling emphasized flexibility, but courts still warn against “ex post reasoning”—the American version of hindsight bias.

3. India – Section 2(1)(ja) & Judicial Interpretations

Indian law defines inventive step as a technical advancement not obvious to a person skilled in the art. Indian courts have consistently cautioned against hindsight. For instance, in Biswanath Prasad Radhey Shyam v. Hindustan Metal Industries, the Supreme Court stressed that “obviousness must be strictly judged and not with hindsight benefit.”

Practical Techniques to Avoid Hindsight

1. Always Start from the Problem, Not the Solution

Examiners and attorneys should ask: What problem was the inventor trying to solve? If the problem itself wasn’t clearly identified in prior art, then the solution is less likely to be obvious.

2. Look at the Prior Art as It Was, Not as It Is Reconstructed

It’s tempting to cherry-pick references and say, “If you combine A and B, you get the invention.” But unless there was a clear teaching, suggestion, or motivation to combine them before the invention, that reasoning risks hindsight.

3. Consider Secondary Evidence

Courts often rely on secondary considerations (a.k.a. “objective indicia”) such as:

• Was there a long-felt but unsolved need?

• Did competitors try and fail before?

• Did the invention achieve unexpected results?
  These serve as a reality check against hindsight-driven rejections.

4. Document the Inventor’s Journey

For patent drafters, one practical tool is storytelling. Patent specifications that clearly outline the technical problem, the failed attempts, and why the solution wasn’t obvious can help fight hindsight arguments during prosecution and litigation.

5. Use the “Could-Would” Test

Especially in EPO practice: Could the skilled person have combined prior art elements? Yes, perhaps. Would they have done so, given the circumstances and the problem at hand? Not necessarily. That distinction is the safeguard against hindsight.

Examples of Hindsight in Action

Example 1 – Smartphone Touchscreens

Touchscreens existed before the iPhone, as did mobile phones. But combining a multi-touch interface with a sleek phone was not “obvious” in 2006. Looking back now, it feels inevitable—but that’s hindsight talking.

Example 2 – CRISPR Gene Editing

Once the CRISPR-Cas9 mechanism was published, its gene-editing application seemed straightforward. Yet, before the breakthrough, researchers had been struggling with gene editing for decades. Only hindsight makes it seem like a “simple” step.

For Inventors and Startups: How to Protect Against Hindsight

1. File Early: The sooner you file, the stronger your claim to novelty and inventive step. Waiting risks more prior art surfacing.

2. Be Detailed in the Application: Explain the problem, prior failed attempts, and why your solution works. This narrative strengthens inventive step arguments.

3. Highlight Advantages: Emphasize unexpected results, efficiency gains, or technical improvements in the patent specification.

4. Consult with Experts: Skilled patent attorneys can frame your invention to withstand hindsight-based attacks.

Conclusion

Avoiding hindsight is not just a legal technicality—it’s about fairness in rewarding true innovation. Without safeguards, every invention could be dismissed as “obvious” once revealed. By applying structured tests like the EPO’s problem-solution approach, U.S. Graham factors, and judicial cautions across jurisdictions, patent systems aim to strike a balance: encouraging innovation while filtering out trivial improvements.

For inventors and businesses, the key is to frame your story clearly, file strategically, and emphasize the real technical leap you’ve made. After all, today’s “obvious” smartphone or gene-editing tool once looked impossible—until someone dared to invent it. 🚀