Overview - Novelty / Inventive Step

Date Published

The objective of the international search is to find the prior art which is relevant for the purpose of determining whether the claimed invention to which the international application relates is new (novel) or involves an inventive step, and, if not, the extent to which the prior art anticipates the invention. [PCT/GL/ISPE/10 at para 15.01]

a. Newness, or novelty, under the PCT is substantially the same as Australian novelty except that the concept of "essential" and "inessential" features does not apply under the PCT. Thus, under the PCT, a document takes away the novelty of any claimed subject matter when every element or step is explicitly or inherently disclosed within the prior art defined in Rule 64.1 (see paragraph 12.01 of the PCT International Search and Preliminary Examination Guidelines (PCT/GL/ISPE/10) ), including any features implicit to a person skilled in the art (see paragraph 12.01 of the Guidelines; also see paragraph 13.11 of the Guidelines for a definition of the "Person Skilled in the Art"). However, the prior art disclosure must be an enabling disclosure (see paragraph 12.02 of the Guidelines).

In considering novelty (as distinct from inventive step) it is not permissible to combine separate items of prior art together (see paragraph 12.06 of the PCT International Search and Preliminary Examination Guidelines). However, if the document refers explicitly to another document to, for example, provide more detailed information on certain features, the teaching of this latter document may be regarded as incorporated into the relevant document, to the extent indicated in the primary document.

Also, a dictionary or the like may be used to interpret special terms used in the document. However, it is not correct to interpret the teaching of the document such that well-known equivalents, which are not disclosed in the document, are included. This is a matter for obviousness. Novelty and obviousness are different criteria. Novelty does exist if there is a difference between the claimed invention and the prior art, and this difference, being implicitly suggested within the prior art, could not have been considered part of the common general knowledge at the time of publication of the prior art (note, however that some authorities have a different approach on this - see the annex to Chapter 12 of the PCT International Search and Preliminary Examination Guidelines.

b. The test for obviousness or inventive step is whether, at the relevant date (usually the priority date of the claim) it would have been obvious to a person skilled in the art, with regard to the prior art found by the examiner and the art known by the examiner and this person at the time, to arrive at something falling within the scope of the claim(s) under consideration. The term "obvious" means "that which does not go beyond the normal progress of technology but merely follows plainly or logically from the prior art".  The following are the basic considerations that apply in determining inventive step/non-obviousness [PCT/GL/ISPE/10 at para 13.03]:

i. the claimed invention must be considered as a whole

ii. the references must be considered as a whole and the skilled person must be motivated or prompted into combining the teaching of the documents so as to arrive at the subject matter as claimed including consideration of a reasonable expectation or likelihood of success - see Inventive Step Objections Involving a Combination of Documents, and

iii. the references must be viewed without the benefit of impermissible hindsight vision afforded by the claimed invention.