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 !