Patentability and interacting with a patent examiner
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Patentability and interacting with a patent examiner: Granting and refusing of patent
applications
Andrei Stefan
Georgios Orfanos(September 2014)
Topics
• Patentability requirements (Novelty and Inventive Step)
• Interacting with an examiner (Search and Examination Phase)
• A few tips and hints
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
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
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
•Why do we need something more than novelty?
Is a patent application inventive?
Invention
Other inventions?
Suppose we only had the novelty requirement for patentability...
Different material
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.
Is a patent application inventive?
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”
Is a patent application inventive?
The problem-solution approach:
compare claim and closest prior artidentify differentiating features
are there such features?
Claim not novel no inventive step
no
Claim novel
yes
continue...
start
Is a patent application inventive?
is the solution (= difference) as claimedknown from prior art?
inventive step
no
are there indicators to combine?
yes
inventive step
no
continue...
yes
formulate the technical problem which the differentiating features solve
Is a patent application inventive?
does the combination of prior art documents solve the problem?
inventive step
no
no inventive step
yes
Is a patent application inventive?
Formulation of technical problem
problem shall not contain elements of solution
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?
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
Topics
• Patentability requirements (Novelty and Inventive Step)
• Interacting with an examiner (Search and Examination Phase)
• A few tips and hints
Interacting with an examiner (Search Phase)
You provide us with: •Claims, drawings, description
We provide you with:•Search Report•Written Opinion
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
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
Interacting with an examiner (Examination Phase)
•Is your amendment (modification) allowable?
•Was it CLEARLY disclosed in the initial application?
•Is your argument valid?
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)
Topics
• Patentability requirements (Novelty and Inventive Step)
• Interacting with an examiner (Search and Examination Phase)
• A few tips and hints
A few tips and hints
1. DO's
2. DON‘Ts
• 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)
A few tips and hints (Do‘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?
A few tips and hints (Dont‘s)
Looking forward to examining your application!
Thank you slide
EuropeanPatent Office
Thank you for your attention !
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