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The Non-obvious Requirement When Filing A Search Report Of Patent Application

Filing a search report is among the first steps when filing a patent application. During the search, similar or same patents will be shown that, in turn, will have negative effects on the proposed patent application. The bottom line: Check and recheck that, indeed, the proposed patent meets the non-obvious requirement!

 

By the way, filing a search report should be made from one of these designated searching authorities: the State Intellectual Property Office of the People’s Republic of China; the United Kingdom Patent Office; the European Patent Office; or an international searching authority as specified under Article 16 of the Patent Cooperation Treaty.

 

Subjective Perspective

Keep in mind that there’s actually no clear-cut criteria for the non-obviousness requirement in patent applications. The patent examiners can use their subjective perspective based on their experience in the field in the determination of non-obviousness. The judges presiding over patent litigations also have similar leeway when making their decisions on the matter, and it’s a fact that inventors have to deal with.

 

The subjective nature of the determination of non-obviousness means that there will be patents that will be rejected for this reason. But inventors, don’t despair as there’s always the appeals route!

 

Objective Perspective

There’s also the fact that the non-obviousness requirement has an objective side to it. Essentially, a newly invented product or process can be deemed obvious when experts in the field consider it to be “generally known”. The aspects that are generally known in the invention are considered so when several references are used in making them known.

 

The patent applicant can also take several steps in establishing the non-obviousness of the invention. Keep in mind that the burden of proof of non-obviousness lies with the inventor; the patent examiner, in a sense, acts as the skeptic. These steps include making sure the title, abstract and drawings of the proposed patent show the invention’s non-obviousness.

 

There are several ways to meet the non-obviousness requirement, too.

  • Use a common shape in an uncommon way
  • Change one or more aspects of a current design to create an uncommon visual effect or practical use not previously known
  • Juxtapose one or more specific elements in two or more existing designs to create a surprising statement, which has an uncommon or unfamiliar visual and/or auditory impact.
  • Prove the commercial success and/or practical applications of the product or process; the product or process has been copied by others but they were unsuccessful in achieving the same results; or the invention shouldn’t have been possible according to naysayers.

 

Long-time inventors typically have little to no issues proving the non-obviousness of their inventions. First-time and novice inventors aren’t as adept for obvious reasons, and this is where an agent can provide guidance and assistance.

 

CtR Intellectual Property Co. is a Hong Kong Patent Application Grant authorised patent agent offering professional patent and trademark application & related services. For details of the patent application, please contact us for free consulation.

 

 

CtR Intellectual Property Co.

Hong Kong Patent Application Grant Authorised Patent Agent

Offering Professional Patent and Trademark Application & Related Services

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