Inventive Step Flashcards
What is the statutory definition of an inventive step?
Not obvious to a person skilled in the art, who knows all matter in the state of the art under Section 2(2)
What is the first step of the Windsurfing/Pozzoli Test for obviousness
(1) Identify the notional skilled person and their CGK.
What is the second step of the Windsurfing/Pozzoli Test for obviousness
(2) Identify the inventive concept of the claim.
Define the skilled person
A hypothetical person/team with ordinary skill in the art, who is not inventive, and has read all prior art but lacks hindsight.
What is the third step of the Windsurfing/Pozzoli Test for obviousness
3) Identify the differences between prior art and the claimed invention.
What is the fourth step of the Windsurfing/Pozzoli Test for obviousness
(4) Assess if the differences would have been obvious to the skilled person or required invention.
How does the EPO Problem-Solution approach assess inventive step?
1) Determine the closest prior art.
2) Identify the objective technical problem
3) Evaluate if the claimed invention is obvious to the skilled person based on the prior art.
How does ex post facto analysis mislead an obviousness assessment?
It assumes the solution was inevitable, working backwards from the invention instead of assessing if the skilled person would have arrived at it naturally
What are some secondary indicia for assessing inventive step?
Long-felt want, commercial success, or overcoming technical prejudice.
When does combining features become inventive under Section 3?
When the combined features interact synergistically.
What qualifies as a synergistic effect?
Interrelated Functions lead to an additional effect that goes beyond the sum of each feature’s effect taken in isolation.
What comprises the CGK?
All that material in the field the skilled person is working in which he knows exists.
What is Purposive Construction?
Interpretation of a patent claim in light of its intended purpose, rather than relying on a strictly literal or overly technical reading of the words.
What is the purpose of Purposive Construction?
Ensures that claims are understood in a way that reflects the true scope of the invention, as intended by the patentee, rather than being narrowly confined by linguistic precision
