What role does Box No. V play in assessing inventive step in the Written Opinion?
What role does Box No. V play in assessing inventive step in the Written Opinion?
Box No. V in the Written Opinion of the International Searching Authority plays a crucial role in assessing the inventive step of a patent application. According to MPEP 1845, “Box No. V is used to indicate that certain claims are found to lack inventive step.”
Key aspects of Box No. V include:
- Identification of claims that lack an inventive step
- Citations of relevant prior art documents
- Explanations of why the claimed invention is considered obvious in light of the prior art
The MPEP further states: “The examiner must indicate the claims which lack inventive step, and the relevant documents. The examiner must also provide an explanation of why the claimed invention does not involve an inventive step.” This means that the examiner must provide a reasoned argument for why the invention would have been obvious to a person skilled in the art at the time of the invention.
Understanding Box No. V is essential for applicants as it highlights potential challenges to the patentability of their invention based on obviousness. It provides valuable insights that can guide applicants in refining their claims or preparing arguments to demonstrate the non-obviousness of their invention in subsequent stages of the patent process.
To learn more: