Inventive step

Question 1

What is the the three steps of PSA according to guidelines?

Answer 1

A: Identifying closest prior art
B: Formulating objective technical problem
C: Starting from CPA would the claimed subject matter be obvious?

Question 2

Which are the three steps for identifying closest prior art?

Answer 2

A1: Identify the aim or the purpose of the invention/ subject matter of the claim.
A2: Identify prior art with same aim or purpose , or at least from same technical field
A3: Which D is closest prior art? The most promising spring board to arrive at the claimed subject matter.

Question 3

Which are the five step of formulating objective technical problem?

Answer 3

B1: Which features are anticipated by CPA, a partial novelty attack.
B2: Reamining feature are distinguishing features –> delta
B3: Discuss if CPA lacks distinguishing feature or if uses some other features instead.
B4: Identify the technical effect that is achieved by delta.
B5: Formulate the objective techcnical problem.

Question 4

(PSA) Which are the five steps to consider if the claimed subject matter would be obvious starting from CPA?

Answer 4

C1: Would the skilled person consult D2 trying to solve OBT?
C2: Does D2 discloses delta (or a more specific embodiment of that feature)?
C3: Is there any motivation to apply delta (of D2) for solving OBT (typically by showing that D2 solves OBT with delta)
C4: No technical obstacles for applying delta?
C5: Conclusion, would the skilled person arrive at the subject matter of claim?

Question 5

What are the two criterions for choosing closest prior art?

Answer 5

The most promising springboard to arrive at subject matter.
1. Same purpose, aim or similar technical problem or at least closely related technical field.
2. Greatest number of technical features in common.

Question 6

Inventive step is defined in the EPC by Article 56 as?

Answer 6

An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art.

Question 7

Can there be several possible starting points in PSA?

Answer 7

Art. 56 states that it “should not be obvious having regard to state of the art”.

If there is several potential starting points, any of them leading to the subject matter being obvious is enough.

Question 8

What does the skilled person know?

Answer 8

Person skilled in art should be presumed to be an skilled practitioner in the relevant field of technology aware of what was common general knowledge in the art at the filing date. A
Access to everything in the state of art.

Question 9

How does state of the art differs for inventive step compared to novelty?

Answer 9

It only includes A.54(2) state of the art not A.54(3). So only prior art published before date of filing.

Question 10

What could beregarded as obvious?

Answer 10

Does not go beyond the normal progress of technology, merely follow plainly or logically from the prior art. Does not involve the exercise of any skill or ability beyond that expected by person skilled in the art.

Question 11

What is regarded to be common general knowledge?

Answer 11

Information on the subject in question contained in
Basic handbooks
Monographs
Textbooks
In exception cases it may be patent specification or scientific publications (T 51/87)

Question 12

What may be used to decide the most promising starting point to arrive at invention as CPA?

Answer 12

That the document have
similar purpose or effect
same or closely related technical field
similar use
minimum of structural and functional modifications

Question 13

CPA must come from … ?

Answer 13

a single publication, and it must be a combination of features seen in one embodiment.

Question 14

In the C exam which are the two main sub-steps when establishing the closest prior art?

Answer 14

Determining the closest prior art and arguing why.
Describing the disclosure in the closest prior art.

Question 15

Where can D2 for inventive step attack be found?

Answer 15

By a specialist in the technical field where the solution should be sought or prompted by the problem
In the neighbouring field or broader general field
Common general knowledge.

Question 16

What is needed for using the teaching of D2 in an inventive step attack?

Answer 16

1. The features is disclosed
2. There is incentive to use this teachning. Technical effect is explicitly or implicitly disclosed.

Question 17

In D2, is it allowed to pick out the distinguishing feature on its own?

Answer 17

No, it is called cherry picking based on hindsight. The entire group of features as described in D2 giving the effect must be taken.

Question 18

Is there any restrictment for using feature from D2 in D1?

Answer 18

The entire group of features giving the effect must be taken.
The group of features must be compatible with D1.

Question 19

Four different types of effects from feature?

Answer 19

Non-Technical, no technical advantage of using distinguishing feature -> not inventive
Technical -> problem solution approach
Clearly (likely technical but not related to the main invention. -> Mere-juxtaposition attack
All technical effects achieved by D1 .-> Finding an alternative.

Question 19

Which two incentives are needed to use D2?

Answer 19

1. A reason for consulting D2.
2. A reason for taking the solution/features.

Question 20

When is it mere-juxtaposition?

Answer 20

1. If the separate features are known/obvious and there is no functional relationship between the features or
2. Known devices functioning in their normal way and not producing any non-obvious working inter-realtionship, no synergistic effect -> 1+1=3