Inventive Step

Date Published

In considering whether there is inventive step as distinct from novelty (see Overview - Novelty / Inventive Step), it is permissible to combine the teachings of two or more prior art references, for example, different published patents, or several teachings contained in the same prior art reference, such as one particular book, but only where such combination would be obvious to the person skilled in the art. In determining whether it would be obvious to combine the teachings of two or more distinct documents, the examiner should have regard to the following [PCT/GL/ISPE/8 at para 13.12]: ​​​​​​​

i. whether the nature and content of the documents are such as to make it likely or unlikely that the person skilled in the art would combine them; 

ii. whether the documents come from similar or neighboring technical fields and if not, whether the documents are reasonably pertinent to the particular problem with which the invention was concerned.

Therefore in searching for inventive step, it is necessary to search for documents, or parts of documents, that provide disclosures whose combination would be obvious to a person skilled in the art. The examiner must always consider each document in the search as part of a possible combination of documents which could be cited. A document cannot be eliminated from inventive step considerations as easily as it can be when considering novelty. See Extent of Search.

Paragraph 13.13 of the PCT ISPE Guidelines specifies the practices of combining teachings for Inventive step considerations. In general the inventive step consideration under the PCT is very similar to the approach used in Australian National examination.

That is:

“It would normally be obvious to combine with other prior art documents a well-known text book or standard dictionary; this is only a special case of the general proposition that it is obvious to combine the teaching of one or more documents with the common general knowledge in the art.”

For further information regarding inventive step issues related to international examination according to PCT Guidelines, see Inventive Step.

See also