GL G VII 15 Examples

The annex to this chapter gives examples of circumstances where an invention may be regarded as obvious or where it may involve an inventive step. It is to be stressed that these examples are only for illustrative purposes and that the applicable principle in each case is "was it obvious to a person skilled in the art?" (see G‑VII, 5). Examiners must avoid attempts to fit a particular case into one of these examples if it is not clearly applicable. Also, the list is not exhaustive.
 

GL G VII 14 Dependent claims; claims in different categories

If the subject-matter of an independent claim is new and non-obvious, there is no need to investigate the novelty and non-obviousness of the subject-matter of any claims dependent thereon, except in situations where the subject-matter of a dependent claim has a later effective date than the independent claim and intermediate documents are to be considered (see F‑VI, 2.4.3).
Similarly, if the subject-matter of a claim to a product is new and non-obvious there is no need to investigate the novelty and non-o

GL G VII 13 Inventive step assessment in the field of biotechnology

In the field of biotechnology, obviousness is considered at hand not only when results are clearly predictable, but also when there is a reasonable expectation of success. In order to render a solution obvious, it is sufficient to establish that the skilled person would have followed the teaching of the prior art with a reasonable expectation of success.

GL G VII 12 Selection inventions

The subject-matter of selection inventions differs from the closest prior art in that it represents selected sub-sets or sub-ranges. If this selection is connected to a particular technical effect, and if no hints exist leading the skilled person to the selection, then an inventive step is accepted (this technical effect occurring within the selected range may also be the same effect as attained with the broader known range, but to an unexpected degree).

GL G VII 11 Arguments and evidence submitted by the applicant

The relevant arguments and evidence to be considered by the examiner for assessing inventive step may be either taken from the originally-filed patent application or submitted by the applicant during the subsequent proceedings (see G‑VII, 5.2, and H‑V, 2.2 and 2.4).
Care must be taken, however, whenever new effects in support of inventive step are referred to.

GL G VII 10.3 Long-felt need; commercial success

Where the invention solves a technical problem which workers in the art have been attempting to solve for a long time, or otherwise fulfils a long-felt need, this may be regarded as an indication of inventive step.
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 invention and not from other influences (e.g. selling tec

GL G VII 10.1 Predictable disadvantage; non-functional modification; arbitrary choice

If an invention is the result of a foreseeable disadvantageous modification of the closest prior art, which the skilled person could clearly predict and correctly assess, and if this predictable disadvantage is not accompanied by an unexpected technical advantage, then the claimed invention does not involve an inventive step (see T 119/82 and T 155/85). In other words, a mere foreseeable worsening of the prior art does not involve an inventive step.

GL G VII 9 Origin of an invention

While the claim must in each case be directed to technical features (and not, for example, merely to an idea), in order to assess whether an inventive step is present it is important for the examiner to bear in mind that an invention may, for example, be based on the following:
(i)the devising of a solution to a known problem; 
Example: the problem of permanently marking farm animals such

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