IPA patent 8.5.5-determining-the-problem — IP Australia Patent Manual of Practice and Procedure – 8.5.5 Determining the Problem

Also in this Chapter: 8.5.1 The Statutory Basis for Inventive Step 8.5.2 Prior Art Base 8.5.3 Assessing Inventive Step in Examination 8.5.4 Common General Knowledge ​​​​​​​ 8.5.6 Identifying the Person Skilled in the Art 8.5.7 Could the PSA have Ascertained, Understood, Regard as Relevant and Combined the Prior Art Information Key Legislation: Patents Act: s7 Novelty, inventive step and innovative step s18 Patentable Inventions The starting point in the "problem-solution" approach to inventive step is identifying a problem that the claimed invention solves. The problem is the focal point for the analysis and provides a context for: identifying the person skilled in the art; determining the relevant common general knowledge; determining whether the person skilled in the art could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded as relevant and, where applicable, combined the prior art information; and evaluating the relevance of the prior art information and whether there is invention in solving the problem. Examiners should objectively determine a problem that the claimed invention solves. They should identify as narrow a problem as possible, but must avoid including any part of the solution in the phrasing of the problem , to avoid an ex post facto analysis of inventive step.