18 WIPO Intellectual Property Handbook:Policy,Law and Use Patentable Subject Matter 2.7 defined in terms of the except atentability.the g that n t protection shall be available for inventions in all fields of technology (see Article 27.1 of the TRPSAgreement). 2.8 ent).E discoveries of materials or substances already existing in nature; scientific theories or mathematical methods, lological and micro schemes thod,such as those for doing business,perforng purely mental 2.9 The TRIPS Agreen hmtce272）taheReieat2smbecoot8re instance inventions the commercial exploitation of w Industrial Applicability (Utility) 2.10 An invention.in order to be patentable.must be of a kind which can be applied fo practical purp a pros or par of a p cess.it should pe cess ou oruse"it (the eneral 2.11 "Applicability" nd"industrial anolicability" the possibility of making and manufacturing inpractice,and that of carrying out orusing in practice. 2 12 The term "industrial"should be y kind of industry.In common lang heans a technical a and the pplicab y of an nguse)of an inve spectrum,the require nen of indus as long a s the claimed invent n can be made e determination of the industri applicability.On the other hand,some countries do not require industrial applicability,but utility
18 WIPO Intellectual Property Handbook: Policy, Law and Use Patentable Subject Matter 2.7 In order to be eligible for patent protection, an invention must fall within the scope of patentable subject matter. Patentable subject matter is established by statute, and is usually defined in terms of the exceptions to patentability, the general rule being that patent protection shall be available for inventions in all fields of technology (see Article 27.1 of the TRIPS Agreement). 2.8 Subject matter which may be excluded from patentability includes the following (see also Article 27.3 of the TRIPS Agreement). Examples of fields of technology which may be excluded from the scope of patentable subject matter includes the following: - discoveries of materials or substances already existing in nature; - scientific theories or mathematical methods; - plants and animals other than microorganisms, and essentially biological processes for the production of plants and animals, other than non-biological and microbiological processes; - schemes, rules or methods, such as those for doing business, performing purely mental acts or playing games; - methods of treatment for humans or animals, or diagnostic methods practiced on humans or animals (but not products for use in such methods). 2.9 The TRIPS Agreement (Article 27.2) further specifies that Members may exclude from patent protection certain kinds of inventions, for instance inventions the commercial exploitation of which would contravene public order or morality. Industrial Applicability (Utility) 2.10 An invention, in order to be patentable, must be of a kind which can be applied for practical purposes, not be purely theoretical. If the invention is intended to be a product or part of a product, it should be possible to make that product. And if the invention is intended to be a process or part of a process, it should be possible to carry that process out or “use” it (the general term) in practice. 2.11 “Applicability” and “industrial applicability” are expressions reflecting, respectively, the possibility of making and manufacturing in practice, and that of carrying out or using in practice. 2.12 The term “industrial” should be considered in its broadest sense, including any kind of industry. In common language, an “industrial” activity means a technical activity on a certain scale, and the “industrial” applicability of an invention means the application (making use) of an invention by technical means on a certain scale. National and regional laws and practices concerning the industrial applicability requirement vary significantly. At one end of the spectrum, the requirement of industrial applicability is met as long as the claimed invention can be made in industry without taking into account the use of the invention. At the other end of the spectrum, the “usefulness” of the claimed invention is taken into account for the determination of the industrial applicability. On the other hand, some countries do not require industrial applicability, but utility
Chapter 2-Fields of Intellectual Property Protection19 Novelty 2.13 something which can be proved or established:only its absence can be proved. 2.14 An invention is new if it is not a ted by the "Prior art"is.ir al all the knowledge that existed prior to the priority date of a existed by given time is one which One viewpoint is that the determination of prior art should be ade against a background countries if it was noti ed into th e country before the making of the invention.even if tha knowledge was available abroad before the date of the making of the invention. aosugoheas"0amdesoanepacegeagbfeenempnabatoaoohe 2 16 Another viewn is based on the differentiation betwee d othe occurred. 2.17 The disclosure of an invention so that it becomes part of the prior art may take place in three ways,namely. by a description of the invention in a published writing or publication in other form: by2degpaoaofohe nvention in spoken words uttered in public,such a disclosure being e p 2.18 Publication in tangible form equires tha there be some physical for public in any manner such as by offering pubi e issued p or published pat applications,writings (whethe pes in eithe publication on the Internet must increasingly be taken into consideration. 2.19 Oral disclosure implies that the words or form of the disclosure are not necessarily recorded as such and includes lectures and radio broadcasts 2.20 Disclosu demonstration.unrecorded television proadcasts and actual public use. e such as by display,sale 2 21 A doc ed if the cu examination is thus compared ele ent by ele cnteifoeaiotaard s the subiect matter of the claim. contains the characteristics c
Chapter 2 - Fields of Intellectual Property Protection 19 Novelty 2.13 Novelty is a fundamental requirement in any examination as to substance and is an undisputed condition of patentability. It must be emphasized, however, that novelty is not something which can be proved or established; only its absence can be proved. 2.14 An invention is new if it is not anticipated by the prior art. “Prior art” is, in general, all the knowledge that existed prior to the relevant filing or priority date of a patent application, whether it existed by way of written or oral disclosure. The question of what should constitute “prior art” at a given time is one which has been the subject of some debate. 2.15 One viewpoint is that the determination of prior art should be made against a background of what is known only in the protecting country. This would exclude knowledge from other countries, if it was not imported into the country before the making of the invention, even if that knowledge was available abroad before the date of the making of the invention. 2.16 Another viewpoint is based on the differentiation between printed publications and other disclosures such as oral disclosures and prior use, and where such publications or disclosures occurred. 2.17 The disclosure of an invention so that it becomes part of the prior art may take place in three ways, namely: - by a description of the invention in a published writing or publication in other form; - by a description of the invention in spoken words uttered in public, such a disclosure being called an oral disclosure; - by the use of the invention in public, or by putting the public in a position that enables any member of the public to use it, such a disclosure being a “disclosure by use.” 2.18 Publication in tangible form requires that there be some physical carrier for the information, a document in the broad sense of the term, and that document must have been published, that is to say, made available to the public in any manner such as by offering for sale or deposit in a public collection. Publications include issued patents or published patent applications, writings (whether they be manuscript, typescript, or printed matter), pictures including photographs, drawings or films, and recording, whether they be discs or tapes in either spoken or coded language. Today, publication on the Internet must increasingly be taken into consideration. 2.19 Oral disclosure, as the expression suggests, implies that the words or form of the disclosure are not necessarily recorded as such and includes lectures and radio broadcasts. 2.20 Disclosure by use is essentially a public, visual disclosure such as by display, sale, demonstration, unrecorded television broadcasts and actual public use. 2.21 A document will only destroy the novelty of any invention claimed if the subject matter is explicitly contained in the document. The subject matter set forth in a claim of an application under examination is thus compared element by element with the contents of each individual publication. Lack of novelty can only be found if the publication by itself contains all the characteristics of that claim, that is, if it anticipates the subject matter of the claim
20 WIPO Intellectual Property Handbook:Policy,Law and Use 2.22 a result falling within the terms of the claim.Generally speaking.lack of novelty of this kind will aqwoo o1 alqissiwad iou st 1 'Ainou 6uuapisuoo ul leyl palou aq pinoys 1l E' Inventive Step (Non-Obviousness) 2 24 In relation to the require rson having ordinary e art"is perhaps the most 2.25 The incl sion of a requirement like this in patent legislati h56 the person with ordinary skil could deduce as an obvious consequence thereof 2neTegie 2.26 n ho in the couny conme. eached in the field 2.27 It should be noted that novelty and inventive step are different criteria.Novelty exists if ce between the invention and the prior art.The question entive of the but that this difference must have two characteristics.Firstly,it must be inventive"that is,the of th some jurisdictions,there is the concept of an"advance"or"progress"over the prior art. Secondly,it is required that this advance or progress be significant and essential to the ty,the biect matte of the claim under exam 高的6 bination may be that not only choice of the combined elements,is obvious.It is the sum of the differences that have beer and not each 2.30 In most cases,it is useful to assess inventive step in relation to three aspects,namely: the problem to be solved;
20 WIPO Intellectual Property Handbook: Policy, Law and Use 2.22 Lack of novelty may however, be implicit in the publication in the sense that, in carrying out the “teaching” of the publication, a person having ordinary skill in the art would inevitably arrive at a result falling within the terms of the claim. Generally speaking, lack of novelty of this kind will only be raised by the Patent Office where there is no reasonable doubt as to the practical effect of the prior “teaching.” 2.23 It should be noted that in considering novelty, it is not permissible to combine separate items of prior art together. Inventive Step (Non-Obviousness) 2.24 In relation to the requirement of inventive step (also referred to as “non-obviousness”), the question as to whether or not the invention “would have been obvious to a person having ordinary skill in the art” is perhaps the most difficult of the standards to determine in the examination as to substance. 2.25 The inclusion of a requirement like this in patent legislation is based on the premise that protection should not be given to what is already known as part of the prior art, or to anything that the person with ordinary skill could deduce as an obvious consequence thereof. 2.26 The expression “ordinary skill” is intended to exclude the “best” expert that can be found. It is intended that the person be limited to one having the average level of skill reached in the field in the country concerned. 2.27 It should be noted that novelty and inventive step are different criteria. Novelty exists if there is any difference between the invention and the prior art. The question, “is there inventive step?” only arises if there is novelty. The expression “inventive step” conveys the idea that it is not enough that the claimed invention is new, that is, different from what exists in the state of the art, but that this difference must have two characteristics. Firstly, it must be “inventive”, that is, the result of a creative idea, and it must be a step, that is, it must be noticeable. There must be a clearly identifiable difference between the state of the art and the claimed invention. This is why, in some jurisdictions, there is the concept of an “advance” or “progress” over the prior art. 2.28 Secondly, it is required that this advance or progress be significant and essential to the invention. 2.29 In order to assess the nature of the differences which are relied upon as constituting an inventive step, account has to be taken of the prior art as a whole. Thus, as distinct from the assessment of novelty, the subject matter of the claim under examination is compared not with each publication or other disclosure separately, but with the combinations thereof, insofar as each such combination is obvious to the person having ordinary skill in the art. The combination may be global, whereas the claim may define a set of subject matter known separately, for instance a new form of washing machine including a particular type of motor coupled to a particular type of pump. For the inventive step to be denied, it is necessary that not only the combination, but also the choice of the combined elements, is obvious. It is the sum of the differences that have been discovered which must be compared with the prior art and judged as to obviousness, and not each of the new elements taken individually, except where there is no technical link between them. 2.30 In most cases, it is useful to assess inventive step in relation to three aspects, namely: - the problem to be solved;
Chapter 2-Fields of Intellectual Property Protection 21 the solution to that problem;and the advantageous effects,if any,of the invention with reference to the background art. 2 31 if the problem is known or obvious.the examination will bear on the originality of the solution claimed.If no inventive step is found in the solution,the question becomes whether or not he resul claimed,and foresee the result,the inventive step is lacking. Disclosure of the Inventior oftbitywhether or rot then 2.34 The description should set out at least one mode for carrying out the invention claimed.This hou invention known to the applicant. 39 ide for proedure hich may endthr beforeftertheen 2eCompocaaebdosgnedioaowhdpeisopeaoa3'8iegsto9 gazetteto the effect that the application is open to public inspection;and/or the Patent Office will,unless opposition is filed within a prescribed period,grant a patent; a patent has been granted on the application. 2.37
Chapter 2 - Fields of Intellectual Property Protection 21 - the solution to that problem; and - the advantageous effects, if any, of the invention with reference to the background art. 2.31 If the problem is known or obvious, the examination will bear on the originality of the solution claimed. If no inventive step is found in the solution, the question becomes whether or not the result is obvious or whether it is surprising either by its nature or by its extent. If a person having ordinary skill in the art would have been able to pose the problem, solve it in the manner claimed, and foresee the result, the inventive step is lacking. Disclosure of the Invention 2.32 An additional requirement of patentability is whether or not the invention is sufficiently disclosed in the application. 2.33 The application must disclose the invention in a manner sufficiently clear for the invention to be carried out by a person skilled in the art. 2.34 The description should set out at least one mode for carrying out the invention claimed. This should be done in terms of examples, where appropriate, and with reference to the drawings, if any. In some countries, the description is required to disclose the best mode for carrying out the invention known to the applicant. 2.35 Whether or not there is an examination as to substance, some jurisdictions provide for an opposition procedure which may be instituted either before or after the grant of a patent. An opposition procedure is designed to allow third parties to present objections to the grant of a patent. 2.36 So that oppositions may be filed, the public must be informed of the content of the application, and this is done by the Patent Office by publication of a notice in an official journal or gazette to the effect that: - the application is open to public inspection; and/or - the Patent Office will, unless opposition is filed within a prescribed period, grant a patent; or - a patent has been granted on the application. 2.37 The grounds upon which an opposition may be filed are prescribed by the relevant legislation. Generally speaking, it should be possible for an opposition to be based on non-compliance with any substantive requirement. However, the law in some countries restricts an opposition to certain substantive requirements only. Typically these grounds are lack of novelty, inventive step or industrial applicability, insufficient disclosure of the invention, or the fact that an amendment made to a patent application has gone beyond the original disclosure in the application as filed. Some jurisdictions make it possible to file an opposition on the ground that the applicant has no right to a patent
22 WIPO Intellectual Property Handbook:Policy,Law and Use Drafting and Filing a Patent Application Identification of the Invention 2.38 The first task in drafting a patent application is the identification of the invention This involves: summarizing all the necessary features which in combination solve a particular technical problem;and an examination of this combination to determine whether it would.according to one's own judgment,fulfill the requirements for patentability.especially inventive step. 2 39 It is durina this pre ss that a full comr prehension of the essence of the invention is obtained,and this is important in helping to draft the description and claims. 2.40 Often the e tha It is es ntial to identify the critical feat reor features and to have an explanation of why olution to the they hle the h the least nu ams shoul ge a having identified the critical features and their effect it is then necessary to ask how else may this effect be achie ed that is can the specific tures be substituted or alte d while still achieving the ese substitutes or alternatives,but also ir the of the invention which must include details of the substitutes or alternatives so that the broad claim can be supported by the description. Practical Aspects of Drafting Patent Applications 2.42 referred tonnvnisparticulamportant when mr ingrafted. 743 vention to be evalua in a ma escriptio mentmust protection.It is from the claims that third parties are able to know what they may do and v hat they
22 WIPO Intellectual Property Handbook: Policy, Law and Use Drafting and Filing a Patent Application Identification of the Invention 2.38 The first task in drafting a patent application is the identification of the invention. This involves: - summarizing all the necessary features which in combination solve a particular technical problem; and - an examination of this combination to determine whether it would, according to one’s own judgment, fulfill the requirements for patentability, especially inventive step. 2.39 It is during this process that a full comprehension of the essence of the invention is obtained, and this is important in helping to draft the description and claims. 2.40 Often the invention contains more than one new feature. It is essential to identify the critical feature or features and to have an explanation of why they contribute to an effective solution to the problem. There are two important reasons for this. First, the claims should be as broad as possible; the broadest claim is the one restricted by the least number of features. Second, having identified the critical features and their effect, it is then necessary to ask how else may this effect be achieved, that is, can the specific features be substituted or altered while still achieving the end result. This is important not only in drafting the claims, which must be wide enough to cover these substitutes or alternatives, but also in the description of the invention which must include details of the substitutes or alternatives so that the broad claim can be supported by the description. Practical Aspects of Drafting Patent Applications 2.41 Drafting practices and requirements differ from country to country. However, there are typically three basic requirements to be complied with in the drafting of a patent application. 2.42 Firstly, there is a requirement that the application should relate to one invention only, or to a group of inventions so linked as to form a single general inventive concept. This requirement, referred to as “unity of invention”, is particularly important when claims are being drafted. 2.43 Secondly, the description should disclose the invention in a manner sufficiently clear and complete for the invention to be evaluated, and to be carried out by a person having ordinary skill in the art. This is of fundamental importance, since one of the main functions of the description is to provide new technical information to third parties. An important phrase to note in this requirement is “a person having ordinary skill in the art.” This allows for a simplified description since it can be assumed that the reader will be an informed reader having the background knowledge which makes it unnecessary to describe every basic detail of the invention. 2.44 Thirdly, for the application to proceed, it must contain claims which determine the scope of the protection. The claims must be clear and concise and fully supported by the description. This third basic requirement is important since the claims are the basis of interpretation of patent protection. It is from the claims that third parties are able to know what they may do and what they may not do. The claims may not be significantly broader or different from that which has been described