Question Q217

National Group:		[please insert name of Group]

Title: 				The patentability criterion of inventive step /
				non-obviousness

Contributors:			[please insert names of contributors]

Reporter within
Working Committee:	[please insert name]

Date:				[please insert date]]

Questions

I.	Analysis of current law and case law
The Groups are invited to answer the following questions under their national laws:
	
Level of inventive step / non-obviousness

1.	What is the standard for inventive step / non-obviousness in your jurisdiction?  How is it defined?
2.	Has the standard changed in the last 20 years?  Has the standard evolved with the technical / industrial evolution of your jurisdiction? 
3.	Does your patent-granting authority publish examination guidelines on inventive step / non-obviousness?  If yes, how useful and effective are the guidelines?
4.	Does the standard for inventive step / non-obviousness differ during examination versus during litigation or invalidity proceedings?

Construction of claims and interpretation of prior art

5.	How are the claims construed in your jurisdiction?  Are they read literally, or as would be understood by a person skilled in the art?
6.	Is it possible to read embodiments from the body of the specification into the claims?
7.	How is the prior art interpreted?  Is it read literally or interpreted as would be understood by a person skilled in the art?  Is reliance on inherent disclosures (aspects of the prior art that are not explicitly mentioned but would be understood to be present by a person skilled in the art) permitted?
8.	Do the answers to any of the questions above differ during examination versus during litigation?

Combination or modification of prior art

9.	Is it proper in your jurisdiction to find lack of inventive step or obviousness over a single prior art reference? If yes, and assuming the claim is novel over the prior art reference, what is required to provide the missing teaching(s)?  Is argument sufficient? Is the level of the common general knowledge an issue to be considered?  
10.	What is required to combine two or more prior art references?  Is an explicit teaching or motivation to combine required?
11.	When two or more prior art references are combined, how relevant is the closeness of the technical field to what is being claimed?  How relevant is the problem the inventor of the claim in question was trying to solve?
12.	Is it permitted in your jurisdiction to combine more than two references to show lack of inventive step or obviousness?  Is the standard different from when only two references are combined? 
13.	Do the answers to any of the questions above differ during examination versus during litigation?

Technical Problem

14.	What role, if any, does the technical problem to be solved play in determining inventive step or non-obviousness?
15.	To what degree, if any, must the technical problem be disclosed or identified in the specification?

Advantageous effects

16.	What role, if any, do advantageous effects play in determining inventive step or non-obviousness?
17.	Must the advantageous effects be disclosed in the as-filed specification?
18.	Is it possible to have later-submitted data considered by the Examiner?  
19.	How “real” must the advantageous effects be?  Are paper or hypothetical examples sufficient?
20.	Do the answers to any of the questions above differ during examination versus during litigation?

Teaching away

21.	Does your jurisdiction recognize teaching away as a factor in favor of inventive step / non-obviousness?  Must the teaching be explicit?
22.	Among the other factors supporting inventive step / non-obviousness, how important is teaching away?
23.	Is there any difference in how teaching away is applied during examination versus in litigation?

Secondary considerations

24.	Are secondary considerations recognized in your jurisdiction?
25.	If yes, what are the accepted secondary considerations?  How and to what degree must they be proven?  Is a close connection between the claimed invention and the secondary considerations required?
26.	Do the answers to any of the questions above differ during examination versus during litigation?

Other considerations

27.	In addition to the subjects discussed in questions 4 - 26 above, are there other issues, tests, or factors that are taken into consideration in determining inventive step / non-obviousness in your jurisdiction?
If yes, please describe these issues, tests, or factors.

Test

28.	What is the specific statement of the test for inventive step/non-obviousness in your jurisdiction? Is there jurisprudence or other authoritative literature interpreting the meaning of such test and , if so, provide a brief summary of such interpretation. 
29.	Does such test differ during examination versus during litigation?

Patent granting authorities versus courts

30.	If there are areas not already described above where the approach to inventive step / non-obviousness taken during examination diverges from that taken by courts, please describe these areas.
31.	Is divergence in approach to inventive step / non-obviousness between the courts and the patent granting authority in your jurisdiction problematic?

Regional and national patent granting authorities

32.	If you have two patent granting authorities covering your jurisdiction, do they diverge in their approach to inventive step / non-obviousness?
33.	If yes, is this problematic?

II.	Proposals for harmonization

The Groups are invited to put forward proposals for the adoption of harmonised rules in relation to the patentability criteria for inventive step / non-obviousness.  More specifically, the Groups are invited to answer the following questions without regard to their national laws:

34.	Is harmonization of inventive step / non-obviousness desirable?
35.	Is it possible to find a standard for inventive step / non-obviousness that would be universally acceptable?
36.	Please propose a definition for inventive step / non-obviousness that you would consider to be broadly acceptable.
37.	Please propose an approach to the application of this definition that could be used by examiners and by courts in determining inventive step / non-obviousness.

211210

Note:	It will be helpful and appreciated if the Groups follow the order of the questions in 	their Reports and use the questions and numbers for each answer. If possible type your answers in a different colour. Thank you for your assistance.