Intl Search Report - Documents considered to be relevant

Started by turnkeydrs, 03-14-18 at 10:51 PM

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turnkeydrs

I have a patentability question.. my associate has an Intl search report which shows 3 patents under the "Documents Considered to be Relevant"   .. and for each patent it lists all claim numbers (eg. 1-23) of my associates patent .. what are the chances that his patent is patentable?

Thanks David

Robert K S

No patent professional could provide a reasonable answer to that question based on the information given.  In view of how your question is framed, I will assume that you have little familiarity with the workings of the world's patent systems, and may not know that most patent claims are alleged to be unpatentable on first look by an examination authority, yet, through the magic of well-performed patent prosecution, many such applications do eventually issue, either on the basis of amendments to the claims or on argument and/or evidence supplied to persuade an examiner or reviewing tribunal of the patentability of the claims.  Your associate is best advised to consult a patent professional, and not to solicit, second-hand, ill-computed probability percentages from the Internet.
This post is made in the context of professional discussion of general patent law issues and nothing contained herein may be construed as legal advice.

Toot Aps Esroh

There should be a letter symbol in the column next to where it says the documents are relevant to claims 1-23.

Is this letter an A (general relevance only), and X (destroys novelty) or Y (makes non-inventive)?

But as RKS points out, many times the international search is not the end of the patentability story.  But sometimes, it is.
I got nothing to say here.  Y'alls all already know all this.


Le tigre n'a pas mangé la pellicule de plastique.

turnkeydrs

Toot Hi,
Category Y for all three documents (all Claims; 1-23).. and Category A for another patent document 'relevant to claim No. 1' only.

Thanks David

Euro-Pat-Att

Quote from: Toot Aps Esroh on 03-15-18 at 03:11 AM
There should be a letter symbol in the column next to where it says the documents are relevant to claims 1-23.

Is this letter an A (general relevance only), and X (destroys novelty) or Y (makes non-inventive)?

But as RKS points out, many times the international search is not the end of the patentability story.  But sometimes, it is.

Don't want to be pedantic, but strictly speaking this is not correct: 'Category "X" is applicable where a document is such that when taken alone, a claimed invention cannot be considered novel or where a document is such that when considered in light of common general knowledge, a claimed invention cannot be considered to involve an inventive step' See https://www.uspto.gov/web/offices/pac/mpep/s1844.html

X does not neccesarily mean: destroys novelty, but may also mean : makes non-inventive
Patenthuis European Patent Attorneys for all your European patent requirements. Opposition cases particularly welcome.

Euro-Pat-Att

Quote from: turnkeydrs on 03-15-18 at 02:18 PM
Toot Hi,
Category Y for all three documents (all Claims; 1-23).. and Category A for another patent document 'relevant to claim No. 1' only.

Thanks David

Well, at least the examiner considers the invention novel, that's already something (but not enough). In this case the Y's mean the examiner considers them not inventive.

Your associate has to evaluate, with or without the help of a patent professional (I recommend: with) whether the examiner has a point or not, and whether this is likely to be fixable.

And don't forget: The examiner is in a certain jurisdiction. In other jurisdictions (at least in the major jurisdictions) they don't really care much for and international search done in another jurisdiction, they make up their own mind.

I always tell my clients: A search report is an opinion of a civil servant. A knowledgeable civil servant, but nonetheless, it is merely that: an opinion. It is not a decision, and even less a decision having international consequences.


Patenthuis European Patent Attorneys for all your European patent requirements. Opposition cases particularly welcome.

fewyearsin

X and Y are commonly misunderstood by US practitioners.  Not that the distinction is particularly important, but:

an X reference is a single reference that, by itself, destroys novelty OR inventive step, that is, an X reference is either a 102 or a single reference 103.

a Y reference is like a 103, a reference that, in combination with something else, shows a lack of inventive step.

So, the common misconception is that an X reference is a 102.  The X may be a 102, but might also be a single reference 103.  That is the end of my little rant :)
This comment does not represent the opinion or position of the PTO or any law firm; is not legal advice; and represents only a few quick thoughts. I'm willing to learn, let me know if you think I'm wrong. Seek out the advice of a competent patent attorney for answers to specific questions.

Toot Aps Esroh

Quote from: fewyearsin on 03-17-18 at 07:18 AM
X and Y are commonly misunderstood by US practitioners.  Not that the distinction is particularly important, but:

an X reference is a single reference that, by itself, destroys novelty OR inventive step, that is, an X reference is either a 102 or a single reference 103.

a Y reference is like a 103, a reference that, in combination with something else, shows a lack of inventive step.

So, the common misconception is that an X reference is a 102.  The X may be a 102, but might also be a single reference 103.  That is the end of my little rant :)


Thanks for providing clarifications, both fewyears and Euro-Pat.  I know what the form says about the meaning of X, I just never see it actually used in the alternative fashion.  Does it happen much?

I rarely enter US from PCT, so that explains why I would not see it in US practice.   

From an EPO standpoint, though, also to the best of my recollection I've never seen the Written Opinion or the Examining Division take the X ref from the ISR and use it for inventive step.
I got nothing to say here.  Y'alls all already know all this.


Le tigre n'a pas mangé la pellicule de plastique.

Euro-Pat-Att

Quote from: Toot Aps Esroh on 03-20-18 at 02:26 AM

Thanks for providing clarifications, both fewyears and Euro-Pat.  I know what the form says about the meaning of X, I just never see it actually used in the alternative fashion.  Does it happen much?

I rarely enter US from PCT, so that explains why I would not see it in US practice.   

From an EPO standpoint, though, also to the best of my recollection I've never seen the Written Opinion or the Examining Division take the X ref from the ISR and use it for inventive step.

I've seen it occasionally in Europe, usually when the argument is lack of inventive step over document A + common general knowledge
Patenthuis European Patent Attorneys for all your European patent requirements. Opposition cases particularly welcome.



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