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Date Published

Principles for Examination

In determining the problem, consideration should be given to the common general knowledge and the prior art information.  In AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99 at [202]–[203]; 107 IPR 177, a full bench of the Federal Court found that if the problem itself is common general knowledge, or if knowledge of the problem is part of the prior art information, then that knowledge or information may be used in assessing inventive step.  However, it is not appropriate to determine the problem based on the description of the invention in the specification, and in particular any problem that the invention is explicitly or implicitly directed at solving, unless this is part of the common general knowledge or prior art.

Examination Practice

In the first instance, examiners should have regard to the specification when determining the problem.  Specifications that discuss the prior art will usually identify difficulties with that art. The specification may explicitly state the prior art difficulties that the claimed invention overcomes and thereby directly identify the problem solved by the invention. Otherwise, examiners should be able to infer the problem solved by the invention from the stated difficulties with the prior art and the scope of the claim. A statement of an "object of the invention" may also be indicative of a problem to be solved.

If there is no specific reference to the prior art or objects of the invention, examiners may be able to deduce the problem from the specification as a whole (including the claims).  In practice, this means that examiners should determine from the description what contribution is made by the essential features of the broadest independent claim, taking into consideration the common general knowledge.  The problem the claimed invention was "intended" to solve can be viewed as the task of attaining that contribution.

A specification may have several well defined objects, or problems, with only some of these solved by the independent claim. In such cases, examiners should identify the problem associated with the independent claim.  If that claim is found to lack an inventive step, dependent claims should be considered in the context of the further problems associated with them.

Considerations at Further Reports

Examiners are to consider arguments that the problem identified is not part of the common general knowledge or prior art information on their merits and should apply balance of probability considerations (see Balance of Probabilities).

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