2.1.6.2.6 Novelty and Inventive Step

Date Published

General Principles

Novelty

Where a novelty objection is taken, examiners need not consider lack of inventive step separately against that claim, since in most cases it can be assumed that claims which are not novel also lack inventive step.  However, the novelty objection should also include a statement that the claims are not inventive (see, for example, PERP codes [F1] to [F3]).

Discussion of Independent and Dependent Claims

Sufficient discussion of independent claims should be provided to support the grounds of objection for such claims. Where there are multiple independent claims with similar or slightly different features, and where similar amendments to all the independent claims will overcome objection(s) raised, examiners may discuss the issues broadly, e.g. in a single objection. It is acceptable for dependent claims to be grouped with their corresponding independent claims and generalised statements made about those claims.

However, discussion of dependent claim features that are not related to the inventive concept and are therefore unlikely to be promoted to the independent claims should be minimised. Where dependent claims add features that are prima facie trivial or generally well known in that art, they can be logically grouped under the relevant independent claims and dealt with in a more general manner.  When objecting in a general manner to dependent claims, examiners must identify at least some of the features defined in those claims and indicate whether these features lack novelty, or lack an inventive step using, for example, arguments of design choice and common general knowledge.  It is also not sufficient to simply state that the features added by the dependent claims are either disclosed or not inventive and in this regard, the text of PERP code [F750A] is acceptable.  Further examples of suitable wording are provided in PERP codes [F750B] and [F751] – [F755].  

More detailed discussion on dependent claims should be provided if examiners are able to determine that a particular feature or combination of features in those claims is related to the inventive concept and therefore likely to be promoted to an independent claim at a subsequent stage.  

Additional discussion on the interpretation of terms should be provided where there is doubt as to the correspondence between features in a claim and a citation. These differences should be discussed to the extent required to impart clarity to the objection. The objection needs to clearly explain how the claims are being interpreted for the purposes of the report.


Note: In determining those documents to cite for novelty/inventive step objections, and the discussion of those documents, the principles outlined in 2.1.7.1 Discussion of Citations, 2.1.7.4 Citing Many Citations and 1.3.8.6 Box V Reasoned Statement Regarding Novelty, Inventive Step & Industrial Applicability (Discussion of Citations Against the Criteria) should be considered.

For complex cases it may not be practical to provide an opinion on every claim (see also 2.1.3 Flexible Approach for Complex Cases).  

‘Whole of Contents’ Novelty

In the case of ‘whole of contents’ novelty objections based on P, X or E documents, examiners are to identify in the report those claims that are not novel (both independent and dependent).  Claims lacking novelty should be discussed as outlined above, i.e. independent claims should be discussed in detail, however detailed discussion of dependent claim features that are not related to the inventive concept should be minimised.


Combining Novelty and Inventive Step Objections

Novelty and inventive step objections do not necessarily have to be raised as separately numbered objections in a report.  There are many instances where combining objections is more logical and provides a better focus on the key deficiencies in an application. In general, where a citation is used for both novelty and inventive step purposes, it is logical to combine the two objections. In this situation a single objection will generally allow the applicant to focus on the key issues of invalidity. Another example is where the features of dependent claims are not related to the inventive concept, as discussed above.

However, there are also cases where distinct issues of novelty and inventive step in an independent claim may be better addressed separately.  An example would be where there are different options within the one claim – one option being not novel and the other not inventive. In such cases, it may be more logical to separate the issues of novelty and inventive step.