PCT International Search and Preliminary Examination Guidelines
PART III EXAMINER CONSIDERATIONS COMMON TO BOTH THE INTERNATIONAL SEARCHING AUTHORITY AND THE INTERNATIONAL PRELIMINARY EXAMINING AUTHORITY
13.01 A claimed invention is considered to involve an inventive step if, having regard to the prior art as defined in the Regulations (see paragraph 11.01), it is not, at the relevant date (see paragraphs 11.02 to 11.05) obvious to a person skilled in the art. Novelty and inventive step are different criteria. A claim lacks novelty if every element or step is explicitly or inherently disclosed within the prior art (see paragraph 12.01). The condition of inventive step/non-obviousness is fulfilled if the invention as a whole, compared to the prior art as a whole, would not have been obvious to a person skilled in the art. Multiple items of prior art may be combined in the determination of whether the requirement of inventive step/non-obviousness is met. Therefore, the examiner should take into consideration the claim’s relation not only to individual documents or parts thereof taken separately but also to combinations of such documents or parts of documents, where such combinations are obvious to a person skilled in the art.
13.02 The “prior art” for the purposes of considering inventive step is as defined in Article 33(3) (see Chapter 11); it does not include later published applications or patents although, in the circumstances mentioned in paragraph 11.07 (see also paragraph 16.73), a later published application or patent may be cited in the international preliminary examination report.