8.5.7 Could the PSA have Ascertained, Understood, Regard as Relevant and Combined the Prior Art Information?

Date Published

Note: The requirements for combining documents apply to all applications filed on or after 1 April 2002.

Subsection 7(3) restricts any pieces of prior art information used for an inventive step objection to those which the person skilled in the art, before the priority date of the relevant claim, could be reasonably expected to have ascertained, understood, regarded as relevant and, where applicable, to have combined them. (Note, however, that information publicly available through doing an act is precluded from consideration during examination; see 2.5.1.4.1 Prior Art Base).

If any piece of prior art information does not satisfy these requirements, it cannot be used as the basis for an inventive step objection.

In many (if not the majority) of cases, examiners can proceed on the basis that a document located in a search could be reasonably expected to have been ascertained, understood and regarded as relevant in the patent area.

However, this is not always the case and before an objection of lack of inventive step can be raised, examiners must determine that the document satisfies these statutory requirements.