Legal Requirements for patentability 2

Question 1

Inventive step/non-obviousness principle

Answer 1

1. second requirement for patentability
2. invention must not have been obvious to a “person skilled in the art” or one “of ordinary skill in the art.”
3. if any person of average skills in the scientific/technical field of the invention could put together different pieces of known information and arrive at the claimed invention –> not patentable.

Question 2

Non-obviousness

Answer 2

1. Invention may be obvious even though not precisely disclosed in a single piece of prior art
2. examiner may find an invention to be obvious when several publications each disclose a piece of the overall inventive picture that can be combined.
3. purpose of non-obviousness –> only if invention represents an appropriate level of improvement over prior art and contribution to technological development that benefits society.

Question 3

Determining inventive step

Answer 3

1. claimed invention is taken into consideration as a whole.
2. should not be considered piece by piece.

Question 4

“A person skilled in the art”

Answer 4

1. hypothetical person presumed to have access to all publicly available prior art information and have the capacity to understand all technical matters in the scientific or tech field relevant to the claimed invention incl. general knowledge and ordinary practical skills common to the field.
2. person has access to normal means and capacity for routine experimentation to, for example, clarify ambiguities on known technology.
3. does not have inventive capabilities beyond capacity to exercise usual faculties of logic and reason/ not expected to exercise inventive imagination to add knowledge to prior art and advance the tech
4. may be team or group of specialists each with a particular skill 5. Level of skill/knowledge varies depending on field –> not average layperson/ min. knowledge and skill; not leading specialist (i.e. max knowledge and skill) –> skill expected of ordinary, duly qualified practitioner in the relevant field.

Question 5

Determining inventive step (U.S.)

Answer 5

1. scope and content of the prior art
2. difference(s) between the prior art and the claimed invention; and
3. the level of those skilled in the pertinent art.

Question 6

Determining inventive step (EPO)

Answer 6

1. problem-solution approach
2. Steps:
   a. determining the closest prior art.
   b. formulating the “objective technical problem” to be solved;
   c. considering whether or not the claimed invention (the solution), starting from the closest prior art and the objective technical problem, would have been obvious to those skilled in the art.

Question 7

Identifying differences between prior art and the invention..

Answer 7

1. carefully comparing the prior art and the claimed invention to detect the precise similarities and differences between the two.
2. if both claimed invention and prior art references disclose a method or process for manufacturing compound X, examiner will compare steps in the methods to determine whether the two are distinct.
   e.g. if claimed invention and prior art references disclose method or process for manufacturing compound X, the patent examiner will compare steps and methods to determine whether the two are distinct. / if claimed invention is a chemical structure –> examiner will compare the structure with other compounds in the prior art to determine how the individual components in the structure are different.

Question 8

Impermissible hindsight analysis (ex post facto analysis)

Answer 8

1. once inventor conceives an invention, invention seems obvious;
2. Examiner and courts must take special care to avoid such “hindsight analysis” or “ex post facto” analysis.

Question 9

Teaching away

Answer 9

• if prior art reference explicitly excludes an element of the invention, reference may not be used to show obviousness.
• e.g. prior art reference “teaches away” or excludes sulfuric acid disclosure…Invention A includes specifically incl. sulfuric acid within is claims –> non-obviousness requirement is satisfied (i.e. prior art reference explicitly states sulfuric acid will not work… whilst inventor comes up with a solution in which sulfuric acid can work)

Question 10

Secondary consideration

Answer 10

1. consideration of secondary factors when deciding the issue of non-obviousness
2. Whether the invention solves a long-standing problem, overcomes the failure of others or is a commercial success.
3. help to demonstrate although invention seems obvious, it is not because others failed in their attempt to solve the problem.