In intellectual property or patent law, the concept of the inventive step is the most complicated and controversial topic---ask any examiner, any applicant, or any patent agent---99.99% of patent applications are objected to by the examiner for being obvious because of some prior art.
To assess the 'inventive step' of an invention, IP professionals and examiners conduct a prior art search, identify two to three references, and generally render inventions as OBVIOUS.
Is this Right?
Not sure about right or wrong, but let me tell the prescribed way of combining prior art references for obviousness or inventive step determination.
For “inventive step” determination, Hon’ble Justice Manmohan Singh once held that all prior art references should be ANALOGOUS.
Estranged #IPAB once also held that multiple prior art references if combined, the references must be ANALOGOUS to each other.
So, the question is, what essentially is an ANALOGOUS prior art?
An analogous prior art refers to prior public domain information (#patents or otherwise) that might not be truly identical to the subject invention, but it should share substantial similarities (Background, Functionality, objective Problem, etc.) with the subject invention.
The concept of analogous prior art is further important for the following reasons:
#1 Preventing Overly Broad Patents
Analogous prior art acts as a safeguard against the granting of overly broad patents. Without the consideration of such prior art, inventors could potentially claim patent rights over minor variations of existing technologies or solutions, innovation, and competition. Analogous prior art helps in maintaining the balance between granting patent protection for genuinely non-obvious inventions while avoiding the monopolization of overly broad subject matter.
#2 Encouraging Innovation
The existence of analogous prior art encourages inventors to push the boundaries as they must demonstrate a significant departure from the prior art to obtain a patent. It encourages inventors to think creatively and develop truly inventive solutions. This, in turn, fosters innovation by rewarding inventors for genuinely groundbreaking advancements.
#3 Consistency in Patent Examination
Analogous prior art provides a consistent and structured approach to patent examination. It offers a framework that patent examiners and judges can use to evaluate the inventive step consistently across various inventions and technology domains. This consistency is vital for the credibility and reliability of the patent system.
Therefore, analogous prior art serves as a cornerstone in the determination of the inventive step of an invention, and its significance lies in ensuring that patents are granted only for inventions that represent true advancements and that inventors are incentivized to think creatively and drive innovation.
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