6.3.8.6 Box V Reasoned Statement Regarding Novelty, Inventive Step & Industrial Applicability

Date Published 09 Oct 2023

Also in this Chapter:

Key Legislation:

Patent Cooperation Treaty (PCT):

Article 19 Amendment of the Claims Before the International Bureau
Article 34 Procedure Before the International Preliminary Examining Authority
Article 35 The International Preliminary Examination Report

Administrative Instructions under the PCT:

s503 Method of Identifying Documents Cited in the International Search Report and the Written Opinion of the International Searching Authority
s604 Guidelines for Explanations Contained in the International Preliminary Examination Report

Regulations under the PCT:

Rule 70.6 Statement under Article 35(2)
Rule 70.8 Explanations under Article 35(2)

Related Chapters:

In completing Box V of an ISO, IPEO or IPRPII form examiners must:

follow the major formatting requirements as detailed in 1.3.10 Annexes
indicate at item 1 (“Statement”) whether the claims reported on do, or do not, meet the requirements for Novelty (N), Inventive Step (IS) and Industrial Applicability (IA)
provide explanations under Box V item 2 in support of the indications in Box V Item 1. Item 2 must:
- list all relevant documents that are discussed under item 2 “Citations and Explanations” of Box V
- Documents in the list can be cited in shortened form except when a new citation is raised (see PCT Administrative Instruction 503)
- Address all claims with positive and/or negative explanations, under each of the headings “NOVELTY (N)”, “INVENTIVE STEP (IS)” and “INDUSTRIAL APPLICABILITY”
- Provide the required level of consideration and discussion for each heading

NOVELTY AND INVENTIVE STEP

CHOOSING CITATIONS

ISR

In the ISR examiners should not cite more documents than necessary. Documents should be chosen to cover as much of the scope of the claims (including any alternatives within the claims and amendments that can be anticipated) as reasonable / practicable. Less relevant documents should only be cited when they concern aspects or details of the claimed invention not found in the documents already selected for citation.

ISO/IPEO/IPRPII

Documents listed in the ISO will usually be the same as those cited in the ISR. As a rule “X” and “Y” category documents selected for citation in the ISR are all relevant documents and should be listed and discussed until they are overcome. Where the ISR cites “X” and/or ”Y” as well as “A” category documents, the “A” category documents may be omitted from the ISO if they merely represent background art. However, this does not apply to “A” category documents cited in the ISR as evidence of the common general knowledge.

During IPE examiners may add additional documents to Box V. Normally these will be documents known to the examiner from previous search or examination work. In general further searches should not be conducted, however, a limited additional search can be done where the examiner has reason to believe that highly relevant documents exist and can be located in a short time from material available to them - see also 6.3.5.1 First IPE Action.

In general, documents cited in the ISR need only be cited in the IPEO/IPRPII when they are considered to be relevant to negative findings in the opinion /report. Thus, documents that are no longer relevant (e.g. where Art 19 / 34 amendments or rebuttals have overcome any negative indications) need not be listed in the opinion/report or identified as the closest prior art document(s) and explained in a positive statement.

Note: Where all claims are novel and inventive, the examiner should provide a positive statement in the form indicated below (see Positive explanations), referencing at least one document, as appropriate.

In general, where an IPEO/IPRPII contains negative findings, only those documents cited in the ISR considered to be relevant to such negative findings need to be cited in the opinion/report. Thus, an IPEO/IPER that contains negative findings regarding novelty/inventive step in respect of at least one of the claims, need not list nor identify any documents that were cited in respect of novelty or inventive step in a previous opinion/report, but no longer deprive the application of novelty or inventive step (as a result, for example, of Art 19 / 34 amendments or rebuttals overcoming previous negative indications). Where the opinion/report contains no such negative findings, however, relevant prior art documents do need to be listed / identified as the closest prior art document(s) and explained in a positive statement in the opinion/report.

“P, X”, “P, Y”, E documents and non-written disclosures

Where priority claim is found invalid, “P,X” or “P,Y” documents cited in the ISR become “X” and “Y” documents and are to be discussed in Box V of the ISO, IPEO and IPRPII as such.
Non-written disclosures (e.g. exhibitions, use, oral disclosure or other non-written means) before the relevant date, “P, X”, “P, Y” and “E” patent documents are to be included at Box VI.

REQUIRED LEVEL OF CONSIDERATION AND DISCUSSION

Examiners can vary the content and style in reports as appropriate to achieve the most effective way of communicating the issues however the following should be noted:

Conciseness

Section 604 (b) of the Administrative Instructions requires explanations to be concise and preferably in the form of short sentences.

Discussion of citations against the criteria

As a general rule, it is not necessary to specify whether the N / IS criteria are met for every combination of citation and claim. Where a number of documents are raised to cover different claims and/or criteria, consideration against each claim may be limited to the strongest argument and citation against the claim under each criteria.
It may be more effective to report against the claims rather than the citations where a citation based approach would result in excessive categorization of each citation against each claim. A citation based approach may be useful where there are a large number of claims to consider. However, both approaches are equally valid and examiners should try to use the most effective approach.
Where close documents of equal value to a document already discussed (i.e. redundant documents) are included in an opinion or report, these documents may be noted and no detailed explanation will be necessary (e.g. “Similar observations apply to D2 and D3”). These additional documents may be grouped as appropriate.

Citation references

For the purposes of reporting against novelty, it is sufficient to identify for each claim, the document relied on and, to the extent necessary, the location in the document of the relevant disclosure.
In general, it is not necessary for examiners to provide a specific individual reference for every feature of the claimed invention, and extensive lists of references to features disclosed in cited documents should therefore be avoided. Thus, for example, an indication of location need not be provided where a feature of the claims is immediately apparent on the face of the document. Referring to figures, structures, tables etc which unambiguously disclose features of the claimed invention is encouraged where this would avoid unnecessary detailed explanation.
Examiners must, however, provide appropriate detail where features are not readily apparent from a document (e.g. due to interpretation/construction issues, inherency, complex technology or features hidden in a lengthy specification). When it is appropriate to provide such detail, this should be done in an effective and succinct manner. In particular, copying a large number of claims into the opinion/report to draw a correspondence between claimed features and the disclosure location should be avoided.
Where it is readily apparent that a more detailed approach is likely to be superfluous and inefficient, for example where a lack of novelty and inventive step will be overcome by resolving a clarity issue, it is appropriate to comment as such and provide only brief explanations against novelty and inventive step for the claims.

Dependent and independent claims

Examiners should primarily focus on the independent claims and generally report more broadly on the dependent claims.
However, more detail along the lines of examples shown in Annex I should be provided where the specification indicates (or it is otherwise clear) that the features of a dependent claim are substantial e.g. features related to the inventive concept.

Grouping of claims

Multiple claims with the same or similar features can be grouped. Any dependent claims that lack an inventive step (because either they add features that are prima facie trivial / generally well known in the art or they add features that are disclosed in an “X” (IS) citation raised against the claims they are appended to) should be grouped together and summarily dealt with.

Positive explanations

Any positive explanations must summarily identify:

any novel claims (usually no detailed explanation is necessary to show an absence of a feature in a citation but this can depend on the circumstances of the case); and
any novel and inventive claims, identifying the inventive advance over prior art

Where there are multiple advances over the prior art defined in a number of dependent claims, a general statement indicating that “the features defined in claims x, y and z distinguish the invention from the cited documents” will suffice.

If the independent claims are novel and inventive, the examiner should discuss the closest prior art document(s) in at least one of the positive novelty and positive inventive step statements and identify the advance over the prior art with respect to either the closest prior art document(s) or with respect to all the prior art documents. Annex E - IPRPII Clear Novel and Inventive Box V Only illustrates a best practice example of positive explanations. This will facilitate completion of the report as a full reconsideration of the citations at that stage should not be necessary.

Cross references

Where Box VI is included in the opinion/report, a cross-reference is automatically inserted into Box V Item 2 by DocGen. See Annex D.

See 6.3.8.6.1 Novelty

See 6.3.8.6.2 Inventive Step

INDUSTRIAL APPLICABILITY

Where the indication in item 1 of Box V in relation to industrial applicability for one or more claims is negative, an explanation as to why must be supplied. If the indication in relation to industrial applicability is positive, a statement to this effect is to be included (see PERP code T644). [Art 35(2) Rule 70.6(b) Rule 70.8]

See 6.3.8.6.3 Industrial Applicability

OPINION RESTRICTION

Where no meaningful opinion can be formed on the questions of novelty, inventive step or industrial applicability of the claimed invention, then the ISO, IPEO and IPRPII may be restricted to those claims that are sufficiently clear and supported by the description to enable an opinion to be prepared.

See 6.3.8.4 Box III Non-Establishment of Opinion with Regard to Novelty, Inventive Step & Industrial Applicability

See 6.3.8.8 Box VII Certain Defects

See 6.3.8.9 Box VIII Certain Observations

Amended Reasons

Amended Reason	Date Amended
	18 Oct 2023
Published for testing	06 Jun 2023