PCT International Search and Preliminary Examination Guidelines


Chapter 13 Inventive step

Other considerations

Ex Post Facto Analysis

13.15  It should be remembered that a claimed invention which at first sight appears obvious might in fact involve an inventive step. Once a new idea has been formulated, it can often be shown theoretically how it might be arrived at, starting from something known, by a series of apparently easy steps. The examiner should be wary of ex post facto analysis of this kind. The prior art must be viewed without the benefit of impermissible hindsight vision afforded by the claimed invention. The teaching or suggestion to make the claimed invention must be found in the prior art and/or the general knowledge of the person skilled in the art and not based on the applicant’s disclosure. A factor to be considered in determining the motivation or prompting for combining the prior art teachings is whether there would have been a reasonable expectation or likelihood of success in combining the collective suggestions in the prior art. In all cases, the examiner should seek to make a practical “real-life” assessment. The examiner should take into account all that is known concerning the background of the claimed invention and give fair weight to relevant arguments or evidence submitted by the applicant.

Technical Value, Long-Felt Needs

13.16  In order to establish the positive assertion that the claimed invention involves an inventive step (non-obviousness), the following factors should also be taken into account as secondary considerations:

(i)  whether the claimed invention fulfills a long-felt need;

(ii)  whether the claimed invention overcomes a scientific prejudice;

(iii)  whether others have previously attempted, but failed to achieve what the claimed invention achieves;

(iv)  whether the claimed invention involves an unexpected result; and

(v)  whether the claimed invention has a particular commercial success.

13.17  If, for example, a claimed invention is shown to be of considerable technical value and, particularly, if it provides a technical advantage which is new and surprising and this can be convincingly related to one or more of the features included in the claim defining the invention, the examiner should be hesitant in raising a negative determination that such a claim lacks inventive step. The same applies where the claimed invention solves a technical problem which workers in the art have been attempting to solve for a long time, or otherwise fulfills a long-felt need, or overcomes a scientific prejudice.

Commercial Success

13.18  Commercial success alone is not to be regarded as indicative of inventive step, but evidence of immediate commercial success when coupled with evidence of a long-felt want is of relevance provided the examiner is satisfied that the success derives from the technical features of the claimed invention and not from other influences (for example, selling techniques or advertising) and is commensurate in scope with the claimed invention.

Dependent Claims

Rule 6.4(b)

13.19  The examiner should bear in mind that, when considering whether the claimed invention appears to be novel, to involve an inventive step (to be non-obvious), and to be industrially applicable, a dependent claim is regarded as limited by all the features of the claim on which it depends. Therefore, if the statement concerning novelty of the independent claim is positive, it should normally be positive for the dependent claims. This principle applies to inventive step and industrial applicability as well, unless the dependent claim contains an additional feature which makes the invention industrially inapplicable.