IPA patent 6.3.8.6-box-v-reasoned-statement-regarding-novelty-inventive-step--industrial-applicability — IP Australia Patent Manual of Practice and Procedure – 6.3.8.6 Box V Reasoned Statement Regarding Novelty, Inventive Step & Industrial Applicability

Also in this Chapter: 6.3.8.1 Front Page and Notification Application Details 6.3.8.2 Box I Basis of Opinion/Report for ISOs, IPEOs and IPRPs 6.3.8.3 Box II Priority 6.3.8.4 Box III Non-Establishment of Opinion with Regard to Novelty, Inventive Step & Industrial Applicability 6.3.8.5 Box IV Unity of Invention ​​​​​​​ 6.3.8.7 Box VI Certain Documents Cited 6.3.8.8 Box VII Certain Defects 6.3.8.9 Box VIII Certain Observations ​​​​​​​​​​​​​​​​​​​​​​​​​​​​​​​​​​​​​​​​​​ Sub-chapters: 6.3.8.6.1 Novelty 6.3.8.6.2 Inventive Step 6.3.8.6.3 Industrial Applicability Key Legislation: Patent Cooperation Treaty (PCT): Article 19 Amendment of the Claims Before the International Bureau Article 34 Procedure Before the International Preliminary Examining Authority Article 35 The International Preliminary Examination Report Administrative Instructions under the PCT: s503 Method of Identifying Documents Cited in the International Search Report and the Written Opinion of the International Searching Authority s604 Guidelines for Explanations Contained in the International Preliminary Examination Report Regulations under the PCT: Rule 70.6 Statement under Article 35(2) Rule 70.8 Explanations under Article 35(2) Related Chapters: 6.3.8.4 Box III Non-Establishment of Opinion with Regard to Novelty, Inventive Step & Industrial Applicability 6.3.5.1 First IPE Action 6.3.8.8 Box VII Certain Defects 6.3.8.9 Box VIII Certain Observations Annex D - IPRPII Annex E - IPRPII Clear Novel and Inventive Box V Only RIO - Processing PCT Tasks - Box V On this page Introduction Novelty and Inventive Step Choosing citations ISR ISO/IPEO/IPRPII ‘P,X’, ‘P,Y’, ‘E’ documents and non-written disclosures Required level of consideration and discussion Conciseness Discussion of citations against the criteria Citation references Dependent and independent claims Grouping of claims Positive explanations Cross references Industrial Applicability Opinion restriction Introduction In completing Box V of an International Search Opinion (ISO), International Preliminary Examination Opinion (IPEO) or International Preliminary Report on Patentability Chapter 2 (IPRPII) form, examiners must: follow the formatting exemplified in Annex A - Written Opinion-ISA Annex B - Written Opinion-IPEO Annex D - IPRPII indicate at item 1 (‘Statement’) whether the claims reported on do, or do not, meet the requirements for Novelty (N), Inventive Step (IS) and Industrial Applicability (IA) provide explanations under Box V item 2 in support of the indications in Box V item 1. Box V item 2 must: List all relevant documents that are discussed under item 2 ‘Citations and Explanations’ of Box V. Documents in the list can be cited in shortened form except when a new citation is raised (see PCT Administrative Instruction 503 ). Address all claims with positive and/or negative explanations, under each of the headings ‘NOVELTY (N)’, ‘INVENTIVE STEP (IS)’ and ‘INDUSTRIAL APPLICABILITY’. Provide the required level of consideration and discussion for each heading. See Annex A - Written Opinion-ISA , Annex B - Written Opinion-IPEO , and Annex D - IPRPII for examples. Choosing citations ISR Examiners should not cite more documents than necessary in the International Search Report (ISR). Documents should be chosen to cover as much of the scope of the claims as reasonable or practicable. This includes any alternatives within the claims and amendments that can be anticipated. Less relevant documents should only be cited when they concern aspects or details of the claimed invention not found in the documents already selected for citation. ISO/IPEO/IPRPII Documents listed in the ISO will usually be the same as those cited in the ISR. As a rule ‘X’ and ‘Y’ category documents selected for citation in the ISR are all relevant documents and should be listed and discussed until they are overcome. Where the ISR cites ‘X’ and/or ‘Y’ as well as ‘A’ category documents, the ‘A’ category documents may be omitted from the ISO if they merely represent background art. However, this does not apply to ‘A’ category documents cited in the ISR as evidence of the common general knowledge. For more information on citation categories, see 6.1.12.5.2 Citation Category . Examiners may add additional documents to Box V during International Preliminary Examination (IPE). Normally these will be documents known to the examiner from previous search or examination work. In general, further searches should not be conducted. However, examiners can do a limited additional search where they have reason to believe that highly relevant documents exist and can be located in a short time from material available to them. See also 6.3.5.1 First IPE Action . Documents cited in the ISR need only be cited in the IPEO or IPRPII when they are considered to be relevant to negative findings in the opinion or report. Thus, documents that are no longer relevant do not need to be listed in the opinion or report, or identified as the closest prior art document(s) and explained in a positive statement. Specifically, this applies to any documents that were cited in respect of novelty or inventive step in a previous opinion or report but no longer deprive the application of novelty or inventive step. An example is when Article 19 or Article 34 amendments or rebuttals overcome previous negative indications. For more information on Article 19 or Article 34 amendments, see 6.3.9.1 Article 19 or Article 34(2)(b) Amendments . However, if the opinion or report contains no negative findings , then relevant prior art documents do need to be listed. These should be identified as the closest prior art document(s) and explained in a positive statement in the opinion or report. Note: The examiner should provide a positive statement for instances where all claims are novel and inventive . The statement should be in the form indicated below (see Positive explanations ), referencing at least one document, as appropriate. ‘P,X’, ‘P,Y’, ‘E’ documents and non-written disclosures Where priority claim is found invalid, ‘P,X’ or ‘P,Y’ documents cited in the ISR become ‘X’ and ‘Y’ documents and should be discussed in Box V of the ISO, IPEO and IPRPII as such. Non-written disclosures before the relevant date, ‘P,X’, ‘P,Y’ and ‘E’ patent documents should be included at Box VI. Examples of non-written disclosures include exhibitions, use, oral disclosure or other non-written means. Required level of consideration and discussion Examiners can vary the content and style in reports as appropriate to achieve the most effective way of communicating the issues. However, the following should be noted: Conciseness Section 604(b) of the Administrative Instructions requires explanations to be concise and preferably in the form of short sentences. Discussion of citations against the criteria As a general rule, it is not necessary to specify whether the Novelty/Inventive Step criteria are met for every combination of citation and claim. Where a number of documents are raised to cover different claims and/or criteria, consideration against each claim may be limited to the strongest argument and citation against the claim under each criteria. It may be more effective to report against the claims rather than the citations where a citation based approach would result in excessive categorization of each citation against each claim. A citation based approach may be useful where there are a large number of claims to consider. However, both approaches are equally valid and examiners should try to use the most effective approach. Where close documents of equal value to a document already discussed (redundant documents) are included in an opinion or report, these documents may be noted and no detailed explanation will be necessary. These additional documents may be grouped as appropriate. For example, ‘Similar observations apply to D2 and D3’. Citation references For the purposes of reporting against novelty, it is sufficient to identify for each claim: the document relied on the location in the document of the relevant disclosure (to the extent necessary). In general, it is not necessary for examiners to provide a specific individual reference for every feature of the claimed invention. Extensive lists of references to features disclosed in cited documents should be avoided. For example, an indication of location does not need to be provided where a feature of the claims is immediately apparent on the face of the document. Examiners are encouraged to refer to figures, structures, tables and other parts of the document which unambiguously disclose features of the claimed invention and where this would avoid unnecessary detailed explanation. Examiners must provide appropriate detail where features are not readily apparent from a document. This may be due to any of: interpretation or construction issues inherency complex technology features hidden in a lengthy specification. When it is appropriate to provide such detail, this should be done in an effective and succinct manner. In particular, copying many claims into the opinion or report to draw a correspondence between claimed features and the disclosure location should be avoided. Where it is readily apparent that a more detailed approach is likely to be superfluous and inefficient – for example, where a lack of novelty and inventive step will be overcome by resolving a clarity issue – it is appropriate to comment as such and provide only brief explanations against novelty and inventive step for the claims. Dependent and independent claims Examiners should primarily focus on the independent claims and generally report more broadly on the dependent claims. However, more detail along the lines of examples shown in Annex I should be provided where the specification indicates (or it is otherwise clear) that the features of a dependent claim are substantial. For example, features related to the inventive concept. Grouping of claims Multiple claims with the same or similar features can be grouped. Any dependent claims that lack an inventive step because of either of the following should be grouped together and summarily dealt with. They add features that are prima facie trivial or generally well known in the art. They add features that are disclosed in an ‘X’ (inventive step) citation raised against the claims they are appended to. Positive explanations Any positive explanations must summarily identify: Any novel claims. Usually no detailed explanation is necessary to show an absence of a feature in a citation, but this can depend on the circumstances of the case. Any novel and inventive claims. Identify the inventive advance over prior art. Where there are multiple advances over the prior art defined in a number of dependent claims, a general statement indicating that ‘the features defined in claims x, y and z distinguish the invention from the cited documents’ will suffice. If the independent claims are novel and inventive, the examiner should discuss the closest prior art document(s) in at least one of the positive novelty and positive inventive step statements. They should identify the advance over the prior art with respect to either the closest prior art document(s) or with respect to all the prior art documents. Annex E - IPRPII Clear Novel and Inventive Box V Only illustrates a best practice example of positive explanations. This will facilitate completion of the report as a full reconsideration of the citations at that stage should not be necessary. Cross references Where Box VI is included in the opinion or report, a cross-reference is automatically inserted into Box V item 2 by DocGen. See Annex D - IPRPII , 6.3.8.6.1 Novelty , and 6.3.8.6.2 Inventive Step . Industrial Applicability If the indication in item 1 of Box V in relation to industrial applicability for one or more claims is negative, an explanation as to why must be supplied. If the indication in relation to industrial applicability is positive, a statement to this effect is to be included (see PERP code T644 ). See 6.3.8.6.3 Industrial Applicability , Article 35(2) , Rule 70.6(b), and Rule 70.8 . Opinion restriction Where no meaningful opinion can be formed on the questions of novelty, inventive step or industrial applicability of the claimed invention, then the ISO, IPEO and IPRPII may be restricted to those claims that are sufficiently clear and supported by the description to enable an opinion to be prepared. See 6.3.8.4 Box III Non-Establishment of Opinion with Regard to Novelty, Inventive Step & Industrial Applicability , 6.3.8.8 Box VII Certain Defects , and 6.3.8.9 Box VIII Certain Observations .