Welcome to the new version of the Patents Manual. Please note there are changes to the numbering and sequence of the chapters and pages in the manual. You are encouraged to take the time to explore and familiarise yourself with this new structure. Document Discloses a Different Problem

Date Published

It is not essential for a document to discuss the same, or a similar, problem in order to be regarded as relevant.  However, where a document lies in an art remote from that of the problem solved by the invention, its relevance is open to question:

"...there appears to be no reason why a person skilled in the nurseryman's art would have approached the rubber industry for a solution to his problem, or, if he had thought of forming coconut fibre into a mouldable mass by use of an adhesive, would have gone to persons skilled in the rubber trade to help him, when he would not have known of any product of that industry made by use of such a technique."

(Proctor v Flo-Con4 IPR 187 at page 198)

Where a document discusses a different problem, examiners will need to provide good reasons why the person skilled in the art would consider the document relevant to solving the problem. In the absence of good reasons, the document would not be regarded as relevant.

One possible reason for regarding a document which does not discuss the same, or a similar, problem as relevant is that it provides relevant technical background knowledge.

Where the problem contains two unrelated part-problems, only one of which is discussed in the document, examiners will need to consider whether a person skilled in the art would consider the document relevant to the whole problem.

Amended Reasons

Amended Reason Date Amended
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