regarding inventive step

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blue & green
Posts: 21
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 / Innovation Networks
Posts: 723
Joined: Wed Nov 12, 2014 3:36 pm

Re: regarding inventive step

Post by EPO / Innovation Networks » 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


Lowell75
Posts: 1
Joined: Fri Dec 03, 2021 7:08 am

Re: regarding inventive step

Post by Lowell75 » Fri Dec 03, 2021 7:13 am

According to Indian Patent Law, "inventive step" means a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art.


Lowe
Posts: 1
Joined: Wed Dec 29, 2021 5:55 am

Re: regarding inventive step

Post by Lowe » Wed Dec 29, 2021 5:59 am

I had a question that The Patents Act 2013 requires that a claim for an invention involves an inventive step. A claim involves an inventive step if it is not obvious to a person skilled in the art, having regard to any matter which forms part of the prior art base. is that true ?


Yolanda69
Posts: 1
Joined: Mon Feb 14, 2022 1:12 pm

Re: regarding inventive step

Post by Yolanda69 » Mon Apr 04, 2022 9:54 am

According to Indian Patent Law, inventive step means a feature of an invention that involves technical advance as compared to the existing knowledge.


yikesdress
Posts: 1
Joined: Tue Jan 03, 2023 2:17 am

Re: regarding inventive step

Post by yikesdress » Sat Jan 07, 2023 4:12 am

Yolanda69 wrote:
Mon Apr 04, 2022 9:54 am
According to Indian Patent Law, inventive step means a feature of an invention that involves technical advance as compared to the existing knowledge.
Will this law continue to be in effect until 2023?


Kimbermoore2
Posts: 10
Joined: Mon Jan 23, 2023 7:20 am

Re: regarding inventive step

Post by Kimbermoore2 » Thu Feb 23, 2023 1:19 pm

blue & green wrote:
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
The inventive step, also known as non-obviousness, is a crucial requirement for the patentability of an invention according to the European Patent Convention (EPC) and the examination approach of the European Patent Office (EPO). An invention is considered to have an inventive step if it is not obvious to a person skilled in the relevant technical field, in light of the state of the art (i.e., the existing knowledge, information and technology) at the time of the invention. The EPO's examination approach requires that an invention must not only be novel and industrially applicable, but also involve an inventive step to be patentable. Providing a solution to a technical problem is a common way of demonstrating an inventive step, but it is not the only way. Other factors that can be considered include the degree of difficulty, the unexpected results or effects achieved, and the commercial success of the invention.

It is possible to change the International Searching Authority (ISA) under certain circumstances, such as if the ISA originally chosen does not have the necessary technical expertise to search the invention. However, changing the ISA can be a complex and time-consuming process, and it may not be possible or desirable in all cases.

If you decide to enter the national phase in another country, the examination process may vary depending on the national patent law and examination procedures of that country. It is possible that the examination in that country could result in a positive decision regarding the patentability of your invention, even if the original search report from the Turkish Patent Office suggested lack of inventive step. However, it is important to note that the examination process in each country is separate and independent, and the decision of one country's patent office does not necessarily influence the decision of another. As for using the second office's search report as the International Search Report (ISR), this is possible only if that office is authorized to act as an International Searching Authority under the Patent Cooperation Treaty (PCT).


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