Guidelines for Examination:PART C: CHAPTER IV PATENTABILITY

Guidelines for Examination
PART C
CHAPTER IV PATENTABILITY

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PART C

CHAPTER III CLAIMS

CHAPTER V PRIORITY

1. General

1.1 Basic requirements

1.2 Further requirements

1.3 Technical progress, advantageous effects

2. Inventions

2.1 Exclusions

2.2 Examination practice

2.3 List of exclusions

2.3.1 Discoveries

2.3.2 Scientific theories

2.3.3 Mathematical methods

2.3.4 Aesthetic creations

2.3.5 Schemes, rules and methods for performing mental acts, playing games or doing business

2.3.6 Programs for computers

2.3.7 Presentations of information

2a. Biotechnological inventions

2a.1 General remarks and definitions

2a.2 Patentable biotechnological inventions

3. Exceptions to patentability

3.1 Matter contrary to ordre public or morality

3.2 Prohibited matter

3.3 Offensive and non-offensive use

3.3a Economic effects

3.3b Biotechnological inventions

3.4 Plant and animal varieties, processes for the production of plants or animals

3.4.1 Plant varieties

3.4.2 Processes for the production of plants or animals

3.5 Microbiological processes

3.5.1 General remarks

3.5.2 Repeatability of results of microbiological processes

4. Industrial application

4.1 General remarks

4.2 Surgery, therapy and diagnostic methods

4.2.1 Limitations of exclusion under Art. 52(4)

4.3 Method of testing

4.4 Industrial application vs. exclusion under Art. 52(2)

4.5 Sequences and partial sequences of genes

5. State of the art

5.1 General remarks and definition

5.2 Enabling disclosures

5.3 Date of filing or priority date as effective date

5.4 Documents in a non-official language

6. Conflict with other European applications

6.1 State of the art pursuant to Art. 54(3)

6.1a Requirements

6.2 Euro-PCT applications

6.3 Commonly designated States

6.4 Double patenting

6a. Conflict with national rights of earlier date

7. Novelty

7.1 State of the art pursuant to Art. 54(2)

7.2 Implicit features or well-known equivalents

7.3 Relevant date of a prior document

7.3a Enabling disclosure of a prior document

7.4 Generic disclosure and specific examples

7.5 Implicit disclosure and parameters

7.6 Examination of novelty

7.7 Selection inventions

8. Non-prejudicial disclosures

8.1 General

8.2 Time limit

8.3 Evident abuse

8.4 International exhibition

9. Inventive step

9.1 General

9.2 State of the art; date of filing

9.3 Person skilled in the art

9.4 Obviousness

9.5 Combination vs. juxtaposition or aggregation

9.6 Origin of an invention

9.7 (deleted)

9.8 Problem-and-solution approach

9.8.1 Determination of the closest prior art

9.8.2 Formulation of the objective technical problem

9.8.3 Could-would approach

9.9 Combining prior-art documents

9.10 Indicators

9.10.1 Predictable disadvantage; non-functional modification; arbitrary choice

9.10.2 Ex post facto analysis; surprising technical advantage

9.10.3 Unexpected technical effect; bonus effect

9.10.4 Long-felt need; commercial success

9.11 Arguments and evidence submitted by the applicant

9.11a Selection inventions

9.12 Dependent claims; claims in different categories

9.13 Examples

CHAPTER IV Annex EXAMPLES RELATING TO THE REQUIREMENT OF INVENTIVE STEP INDICATORS (see IV, 9.13)

1. Application of known measures?

1.1 Inventions involving the application of known measures in an obvious way and in respect of which an...

1.2 Inventions involving the application of known measures in a non-obvious way and in respect of which an...

2. Obvious combination of features?

2.1 Obvious and consequently non-inventive combination of features:

2.2 Not obvious and consequently inventive combination of features:

3. Obvious selection?

3.1 Obvious and consequently non-inventive selection among a number of known possibilities:

3.2 Not obvious and consequently inventive selection among a number of known possibilities:

4. Overcoming a technical prejudice?