Inventive step

Pizza or something like it could have been produced by the Phoenicians, the Greeks or the Romans. Given the tendency of people to eat their food off a piece of flat bread the inventive step of cooking the other ingredients with the bread could have occurred to any number of people. 

To have an inventive step the invention, when compared with what is already known, that is. 

In general, a patent can be granted for an invention which is new (the novelty requirement), is not obvious (the inventive step requirement), is commercially or industrially useful (the utility requirement) and is not otherwise barred by law from being the subject of a patent (for example, at least at the European Patent Office (EPO) plant and animal varieties are not patentable, and inventions the publication or exploitation of which are contrary to morahty are not patentable). The requirements for a patentable invention are outlined in Table 12.1. 

The product or process invention claimed in a patent must have an inventive step that is to say the invention must not be obvious to a person skilled in the art . The rationale for this is to prevent novel, but trivial or obvious, variants of a known product or process from being given a monopoly. Inventive step is a separate requirement from novelty the question Is there an inventive step is only relevant once the novelty ol a claimed invention has been established. At least at the EPO, lor the purposes of inventive step, and for the purposes of sufficiency of disclosure (see below) the fictional person skilled in the art is deemed to have the same degree of knowledge, and for bicatalysis inventions is likely to be a team of suitably qualified people e g. one Ph.D. researcher assisted by two laboratory technicians fully acquainted with the known techniques relevant to the technolog> in question. 

In general, the EPO consider inventive step on a so-called problem-and solution basis if the solution to a known problem is not obvious to the person skilled in the art then there is an inventive step. The single closest prior disclosttre is iderrtified and the obviousness or non-obviousness of the solution is assessed in relation to that disclosttre. The US courts have generally considered whether the prior disclostttes wottld have suggested to those of skill in the art that they should make the claimed compositiorr, or carry out the claimed process and whether the prior disclosure would have revealed that in making the claimed invention or carrying out the claimed process, those of skill in the art would have a reasonable expectation of success. 

Define the terms novelty, inventive step, verbal disclosnie, obviousness, claim, inventor, assignee, foreign equivalent, prior art, priority date, provisional (preliminary) application, examination, opposition. 

An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art... 

The European patent equivalent to the nonobviousness requirement in the United States is referred to as the inventive step requirement. Although the terminology is different, the overall effect is generally the... 

The basic requirements of national laws on protection of inventions by patents are novelty, inventive step, and industrial application, which are now examined in turn. 

As an example, suppose that it is known to experts in the field that an extract from the plant Clusia criuva has anti-inflammatory activity. Therefore, a specialist in the subject would be led to test other species of the genus Clusia for the same biological activity (anti-inflammatory). Nevertheless, a way to prove inventive step would be to demonstrate that the species of interest, for example Clusia rosea, presents an unexpected technical effect. In other words, while the species Clusia criuva has an undesirable side effect associated with its anti-inflammatory action, such... 

The stance of the European Patent Office in general is to consider as indicative of the presence of the inventive step the existence of surprising or superior properties, which could not be anticipated by persons skilled in the art. In the case of a new protein, for instance, this might be fewer or less severe side effects, better absorption, or greater stability. 

The claim for a specific mAb, however, will be inevitably restricted. The surprising technical effect required to establish the presence of an inventive step imposes limits on the possibilities of generalizing the invention, that is, the scope of protection. 

Tables 15.1 and 15.2 summarize the requirements for novelty and inventive step for patentability of DNA sequences and mAbs.

Novelty Inventive step Novelty Inventive step... 

Under the terms of Article 8 of the Brazilian Industrial Property Law, patentable inventions are those that have the three basic requirements of novelty, inventive step, and industrial application. Additionally, from Article 50, II, if the specification does not clearly and sufficiently describe the subject matter so as to enable its reproduction by a technician in the subject, the so-called sufficiency of disclosure, it is against the provisions of Article 24, and is thus not accepted (Art. 50, II). 

Brazilian Law 9279/96. According to the latter provision, all or part of living things are not patentable, except transgenic microorganisms that meet the three patentability requirements (novelty, inventive step, and industrial application) set forth in Article 8 of the law and that are not mere discoveries. 

It is not necessary for a patentable invention to be the result of an ingenious idea. Article 56 EPC requires an "inventive step" which is "not obvious to a person skilled in the art", regarding the state of the art at the time the application was filed. Similarly in the USA "... a patent may not be obtained. .. if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains" (35 USC, 103). 

Oppositions on the grounds of obviousness also depend on earlier publications, patents, and other evidence which demonstrates that the invention could have been deduced by a person skilled in the art without an inventive step. Objections against the utility of a patent are rare, because in most cases it will be very difficult to call into question that the subject of the invention will (also in future) be of no use. 

There are three basic requirements for patentability novelty non-obviousness or inventive step and usefulness or industrial applicability. Each requirement may differ from country to country and is set forth by the statutes and regulations of each country. 

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