regarding inventive step

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blue & green
Posts: 16
Joined: Sun Dec 03, 2017 7:12 pm

regarding inventive step

Post by blue & green » Wed Mar 03, 2021 9:08 am

could someone explain what inventive step comprehensively stands for according to epo's examination approach?

we have forwarded our document for search and international search at same office(turkish patent office)

the searcher says that the invention was novel and industrial applicable ,however in his opinion letter,he also explains that it lacks an inventive step and consequently it seems my first invention has not passed inventive step (not sure).

but this is the letter appearing in ISR. it is not the exact examination form. Today,we have got in touch with searcher over the phone and he said:

the inventive step is being defined according whether the invention was solving the problem or not.
(But we were informed that any invention had not had to provide a "solution" to any problem ,it was explained that providing a novel invention would be sufficient.)

so,my questions:

1) what does "inventive step" stand for according to epo's assessment ?
(Does the document have to provide a solution to any problem? or is providing a novelty sufficient?)

2)can we still change ISA ?

3) assume please we still would like to enter into national phase for another country,then what happens if we assume that that country's examination is in affirmative form? and could you also inform please whether we would be able to use that (second) office's search report as ISR?

Kind Regards

EPO / Patent Information
Posts: 614
Joined: Wed Nov 12, 2014 3:36 pm

Re: regarding inventive step

Post by EPO / Patent Information » Tue Apr 06, 2021 10:25 am

We understand that you would like to know how the EPO assesses inventive step and whether it amounts to a separate patentability requirement to novelty. You would also like to know whether it is possible to change the International Search Authority as originally selected and whether a search report prepared after entering a national phase can be used as International Search Report.

Please understand that we can only provide general legal information regarding the procedures before the EPO, without prejudice to the decisions of the competent department in each individual case. Under this proviso we would like to inform you as follows:

Inventive step is one of the substantive requirements, which need to all be met by an invention in order for a European patent to be granted (Article 52(1) EPC), namely novelty, inventive step and industrial application. Novelty (Article 54 EPC; Guidelines for Examination, Part G-VI) and inventive step are different criteria. The question – "is there inventive step?" – only arises if the invention is novel (Guidelines for Examination, Part G-VII,1).

According to Article 56 EPC, for an invention to be considered as involving an inventive step, it must not be obvious to a person skilled in the art, having regard to the state of the prior art. The practice of the EPO in applying Article 56 EPC is to deploy the “problem-solution” approach, which comprises three stages: (1) determining the “closest prior art; (2) establishing the “objective technical problem” to be solved and; (3) on the basis of this, determining whether the claimed invention would have been obvious to the skilled person (Guidelines for Examination, Part. G-VII, 5). Accordingly, in order for the requirement of inventive step to be met, the invention must provide a technical solution to a technical problem.

The International Searching Authority (“ISA”) is the patent office responsible for carrying out the international search for an international application under the PCT (Article 16(1) PCT). Where two or more ISAs are competent for searching an international application, the applicant shall indicate his choice of ISA (Rule 4.14bis PCT). Where more than one ISA is competent, the applicant may change their choice of ISA only where the search copy has not yet been transmitted to the ISA originally chosen by the applicant (PCT Receiving Office Guidelines, Chapter VI, section 115A). However, please note that in addition to the international search report (ISR) which will be prepared by the competent ISA, the applicant may also request a supplementary international search report (“SISR”) before a competent supplementary international searching authority (“SISA”) within 22 months from the priority date (Rule 45bis PCT).

As regards your last question concerning the impact of entering a national phase by the application, please note that we may not provide any information regarding the practice and law applied by patent offices other than the EPO. Where the EPO is the elected or designated Office of a PCT application, a supplementary European search report shall be drawn upon entry into the European phase (Article 153(7) EPC) unless the EPO has already drawn up an international search report as either ISA or (Guidelines for Examination, Part E-IX, 3.1). This supplementary search report is used for the purpose of processing the application in the European phase at the EPO and may not be equated with an ISR. Moreover, the EPO decision to grant the patent or to refuse the application does not have an impact on the decisions of other patent offices because patent grant proceedings at the EPO are independent from proceedings in other patent offices.

We hope this information was of assistance to you.

Directorate Patent Law

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