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Patent Q&A: Whether there is a provision for the examiner to check on inventive step?

Patent Question: Whether there is a provision for the examiner to check on inventive step? It is not explicitly mentioned.

Answer: Yes, it is not explicitly mentioned. But in S.12, it is mentioned. If you see S.12 talks about anything requirements of this Act and the rules, so, everything will come under that. And it also talks about lawful grounds for objection. Lawful grounds for objection, obviousness could be a ground for objection. So, it is mentioned indirectly, but as I said, because the examination at this stage, the examination, it is largely a database biased search. The examination process in all the patent offices is bias towards documents.

So, because there is a bias towards documents, they look for anticipation and novelty more than they would look for inventive step and even if you look at the PCT Y-category report. PCT reports have X-category and Y-category; Y-category is on inventive step, inventive step is again, the argument is generated through reading through documents.

Whereas in S.64, we know that inventive step can go beyond documents, it can be something which a person knew, what was known to a person. So, there is a bias and we had mentioned it in our invite, there is a bias towards novelty because novelty is a requirement that can be completed looking at database and documents; whereas inventive step, you have to bring the knowledge of a person skilled in the art. So that’s why all patent offices have a bias towards novelty. So it is mentioned, it is mentioned as I pointed out in 12(1)(b), it is mentioned in 12(1)(a) you can also say that 12(1)(b) when it says about lawful grounds for objection it could also be covered there.

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