Patentability and interacting with a patent examiner
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This document discusses patentability requirements and interacting with patent examiners during the patent application process. It covers novelty and inventive step assessments, defining the problem an invention solves, and communicating with examiners during the search and examination phases. Tips are provided, such as clearly identifying the closest prior art, the difference from the prior art, and why the solution is not obvious. The document cautions applicants to ensure any amendments or claim interpretations are fully supported by the original application disclosure.
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Patentability and interacting with a patent examiner
- 1. Patentability and interacting with a patent examiner: Granting and refusing of patent applications Andrei Stefan Georgios Orfanos (September 2014)
- 2. Topics • Patentability requirements (Novelty and Inventive Step) • Interacting with an examiner (Search and Examination Phase) • A few tips and hints
- 3. Patentability • European patents for inventions which are – new – inventive – industrial applicable • Exclusions: – discoveries, scientific theories and mathematical methods; aesthetic creations; schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers; presentations of information; diagnostic methods and methods for treatment of the human or animal body
- 4. What makes a patent application new? What is Novelty (Article 54 EPC) in Europe? The claim must differ from the closest prior art in at least one technical feature
- 5. What makes a patent application new? • features and method steps are interpreted as broadly as they make technical sense • the technical information - not the wording - is relevant • implicitly disclosed features of the prior art
- 6. Is a patent application inventive? •Why do we need something more than novelty?
- 7. Suppose we only had the novelty requirement for patentability... Invention Other inventions? Different material Is a patent application inventive?
- 8. Is a patent application inventive? Article 56 EPC • 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.
- 9. Is a patent application inventive? What is an Inventive Step (Article 56 EPC): – The solution must not be “obvious” – Obviousness = lack of inventive step – Problem-Solution approach ® helps to identify an “inventive step” ®
- 10. Is a patent application inventive? The problem-solution approach: compare claim and closest prior art identify differentiating features are there such features? no Claim not novel no inventive step yes Claim novel continue... start
- 11. Is a patent application inventive? is the solution (= difference) as claimed known from prior art? no inventive step yes are there indicators to combine? yes no inventive step continue... formulate the technical problem which the differentiating features solve
- 12. Is a patent application inventive? does the combination of prior art documents solve the problem? no inventive step yes no inventive step
- 13. Is a patent application inventive? Formulation of technical problem problem shall not contain elements of solution
- 14. Is a patent application inventive? Indicators to combine / not to combine multiple documents • any hint to the skilled person • apparent drawback of the prior-art • prior art is silent but skilled person has to put the teaching into practice • is anything teaching away in closest prior art (contra-indicator)? • inherent incompatibility (contra-indicator) • similar, neighboring or remote technical fields?
- 15. Is a patent application inventive? Arguments against an inventive step • application of known measure • well-known equivalents • analogous situation • obvious selection • juxtaposition Arguments in favour of an inventive step • features that mutually support each other and achieve a synergetic effect • measures against the general believes
- 16. Topics • Patentability requirements (Novelty and Inventive Step) • Interacting with an examiner (Search and Examination Phase) • A few tips and hints
- 17. Interacting with an examiner (Search Phase) You provide us with: •Claims, drawings, description We provide you with: •Search Report •Written Opinion
- 18. Interacting with an examiner (Search Phase) • Example: • claim 1 : Swiss army knife with a USB port • claim 2: Swiss army knife with an HDMI port • We cite a document D1 describing a swiss army knife and a document D2 describing USB ports, with a hint at a swiss army knife. • Sorry, claim 1 not inventive (D1 + D2). • HDMI also a port so claim 2 is also not inventive
- 19. Search Phase -> Examination Phase • You can of course not agree with our Written Opinion • Give us arguments and amend the claims • “D2 says that HDMI is completely different from USB and is hard to use with a swiss army knife” • Claim 1: Swiss army knife with a USB port and HDMI port • We go to Examination
- 20. Interacting with an examiner (Examination Phase) •Is your amendment (modification) allowable? •Was it CLEARLY disclosed in the initial application? •Is your argument valid?
- 21. Interacting with an examiner • Different ways in which Applicants can communicate with the examiner • Depending on the issues to be discussed, different channels should be used: dealing in writing telephone consultation (important issues – novelty, IS) informal interview oral proceedings (FINAL DECISION)
- 22. Topics • Patentability requirements (Novelty and Inventive Step) • Interacting with an examiner (Search and Examination Phase) • A few tips and hints
- 23. A few tips and hints 1. DO's 2. DON‘Ts
- 24. A few tips and hints (Do‘s) • 1 Closest prior art DOCUMENT (D1?) • 1 DIFFERENCE to the prior art • Explanation of the PROBLEM solved by this difference • Why the SOLUTION is not obvious • 1 Explicit EMBODIMENT (example)
- 25. A few tips and hints (Dont‘s) •Clarity (Article 84 EPC) Interpretation Wording (multiple meanings) Terminology Results to be achieved in claims (Ex: a swiss army knife that allows me to connect to the PC – HOW???) •Amendments – did you actually disclose a Swiss Army knife with a USB and a HDMI port?
- 26. Looking forward to examining your application!
- 27. Thank you slide European Patent Office Thank you for your attention !
Hinweis der Redaktion
- Before telling them why we need an additional criterion in order to grant a patent, the participants could be asked to express their opinion on this.
- Let‘s suppose that somebody has invented a lamp with a fitting made of copper and that he has obtained a patent for it. If we only had the requirement of novelty, somebody else, e.g. a competitor of the patent owner, could slightly modify the lamp with the fitting made of copper, e.g. by simply changing the material of its fitting, make it novel over the copper and be granted a new patent for what is in fact a mere workshop modification of the original lamp. This would be very unfair on the patent owner since his competitor would be allowed to profit from the efforts of the inventor at basically no cost. Therefore, in order to exclude minor workshop modifications or improvements from being patented, the additional requirement of non-obviousness was introduced in most patent systems.
- As we have seen it in the lesson on novelty, the state of the art can be established by carrying out a search of the literature. However, what seems obvious to one person may not seem quite obvious to another, so Article 56 sets out that the question of inventive step must be judged from a standpoint of a skilled person.