Inventive Step

In many laws, the inventive step requirement means that a claimed invention shall not be obvious to a person skilled in the art at the time of the filing date (or, where applicable, priority date), or at the time the invention was made, in view of the prior art. In some countries, instead of the expression “obvious” (or “non-obvious”), expressions such as “inventions which could have been easily made” or “[an invention] having prominent substantive features and representing a notable progress” appear in national laws. Whatever term is used, the definition of “prior art” or “state of the art”, directly affects the determination of the inventive step. Where the scope of the prior art is limited, it is more likely that a certain claimed invention would be considered as involving an inventive step. Further, as for the novelty requirement, the interpretation and determination of the scope of the claimed invention is essential for the determination of the inventive step. 

National and regional authorities have developed various methodologies that can be applied when assessing inventive step, such as the “problem and solution”-approach used in the EPO, the “Graham test” in the United States of America and the “reasoning test” in Japan. Further, the interpretation of the term “inventive step”(“non-obviousness”) by national courts has developed into a body of case law in many countries. Since a vast majority of inventions are based on existing inventions, how to assess inventive step in an invention based on a combination of existing features has been extensively developed in a number of jurisdictions. Based on such case law, a number of patent offices publish examination guidelines, which are addressed primarily to the office’s examiners for consistent application of the law, but also to applicants and patent practitioners for a better understanding of office practices.64 Such examination guidelines typically contain the methodology, various factors to be taken into consideration (for example, problems to be solved by the invention, advantageous effects of the invention and secondary considerations such as commercial success and long-felt needs) and practical examples in various technical fields.

TRIPS Agreement

The TRIPS Agreement contains the national treatment principle and the most-favored-nation principle. The latter principle provides that any advantage, favor, privilege or immunity granted by a Member to the nationals of any other country (whether a Member or not) shall be accorded immediately and unconditionally to the nationals of all other Members, with certain specified exemptions. As is the case for national treatment, procedures provided in multilateral agreements concluded under the auspices of WIPO relating to the acquisition or maintenance of intellectual property rights are exempted from this principle.

Article 7 of the TRIPS Agreement in conjunction with the preamble of the Agreement sets out the objectives of the Agreement: the protection and enforcement of intellectual property rights should contribute to the promotion of technological innovation and to the transfer and dissemination of technology, to the mutual advantage of producers and users of technological knowledge and in a manner conducive to social and economic welfare, and to a balance of rights and obligations. Article 8 provides “principles” which recognize the rights of Members to adopt measures necessary to protect public health and nutrition, and to promote the public interest in sectors of vital importance to their socio-economic and technological development, provided that such measures are consistent with the provisions of this Agreement. It also recognizes that appropriate measures, provided that they are consistent with the Agreement, may be needed to prevent the abuse of intellectual property rights by right holders or the resort to practices which unreasonably restrain trade or adversely affect the international transfer of technology.

Compared with the treaties adopted under the auspices of WIPO,one of the main particularities of the TRIPS Agreement is the dispute settlement system established under the WTO Agreement. Articles XXII and XXIII of GATT 1994 (except subparagraph 1(b) and 1(c) of Article XXIII), as elaborated and applied by the WTO Understanding on Rules and Procedures Governing the Settlement of Disputes, apply to consultations and the settlement of disputes under the TRIPS Agreement. This means that benefits enjoyed in another trade area may be withdrawn in retaliation for the violation of the TRIPS Agreement (so-called cross-retaliation).

The Budapest Treaty

The Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure

Disclosure of the invention is a requirement for the grant of patents. Normally, an invention is disclosed by means of a written description. Where an invention involves a microorganism or the use of a microorganism, disclosure is not always possible in writing but can sometimes only be effected by the deposit, with a specialized institution, of a sample of the microorganism.

In order to eliminate the need to deposit in each country in which patent protection is sought, the Budapest Treaty provides that the deposit of a microorganism with any “international depositary authority” suffices for the purposes of patent procedure before the national patent offices of all of the contracting States and before any regional patent office (if such a regional office declares that it recognizes the effects of the Treaty). The European Patent Office (EPO), the Eurasian Patent Organization (EAPO) and the African Regional Intellectual Property Organization (ARIPO) have made such declarations. The “international depositary authority” is a scientific institution - typically a “culture collection” - which is capable of storing microorganisms. Presently, there are 37 such authorities.

The Treaty is primarily advantageous to the depositor who is an applicant for patents in several countries. Instead of depositing the microorganism in each and every country in which he files a patent application referring to that microorganism, he can deposit it only once, with one depositary, with the consequence of saving costs incurred by multiple deposits. Further, the security of the depositor is increased by the fact that, for an institution to become an international depositary authority, solemn assurances as to the seriousness and continued existence of that institution must be given by a State or by an intergovernmental industrial property organization.

35 USC 102 explained

"35 USC 102(a) THE INVENTION WAS KNOWN OR USED BY OTHERS IN THIS COUNTRY,OR PATENTED OR DESCRIBED IN A PRINTED PUBLICATION IN THIS OR A FOREIGN COUNTRY, BEFORE THE INVENTION THEREOF BY THE APPLICANT FOR PATENT"

102(a) defines that US is a first to invent country and you are not going to get a patent if your invention was known (in written form usually) or used by others (practiced) by others in USA before date of invention, and if it was patented or was described in printed publication by others in any country than also you are not going to patent.

There are some keywords like 'Others' which means other than inventor himself. If inventor himself has published or practices he might still get a patent but it was done by others than he is not going to get a patent. Keyword 'in this country' means that that if the patent was being used in any country other than USA then he might still be able to get a patent. Keyword 'printed publication in this or foreign country' means that if the invention was patented or was described in printed publication (no language bar is there so publication can be of any language) he is out of luck. The keyword 'public' means that the publication should be available to public if the publication was maintained as confidential within a company its not public but if the publication was published in a magazine in some obscure magazine in place like China in chinese language its public. Keyword "before the invention" means the date which inventor can prove he actually invented the invention and it could be before earliest filing date (if inventor can prove it with some written records).

"35 USC 102(b) THE INVENTION WAS PATENTED OR DESCRIBED IN A PRINTED PUBLICATION IN THIS OR A FOREIGN COUNTRY OR IN PUBLIC USE OR ON SALE IN THIS COUNTRY, MORE THAN ONE YEAR PRIOR TO THE DATE OF THE APPLICATION FOR PATENT IN THE UNITED STATES"

Exceptions and Limitations of the Rights of patent - Top countries

USA

1. Solely for uses reasonably related to the development and submission of information under the Federal law which regulates the manufacture, use or sale of drugs and veterinary biological products, other than those products primarily manufactured using certain genetic manipulation techniques.
2. Certain uses concerning foreign vessels, aircraft or vehicles which temporarily or accidentally enter national territory.
3. As regards business method patents, continued use by a person who in good faith, had put the invention into practice at least one year before the filing date (priority date) and commercially used it before that date. 

Japan

1. Non-commercial use.
2. Use for experiment or research purposes.
3. Vessels and aircraft passing through Japan.
4. Products existing in Japan before the filing date (priority date).
5. Preparation of patented medicines by mixing two or more medicines in accordance with the prescription of physicians or dentists, and medicines so prepared.
6. Non-exclusive license available as of right in the case of prior use or working of the invention prior to the filing date (priority date).
7. Compulsory licenses.

India

1. The grant of a patent is subject to the following conditions:
(a) importation or manufacture of articles and uses of processes by, or on behalf of the Government for its own use;

The Scope Of Background Section

For the patent filing in US, it is good practice to minimize the amount of information provided in the Background section of a patent application.
The field of invention section is very important as if you leave this field broad , the scope can be interpreted to include more art than is actually applicable, thereby opening the patent application to obviousness rejections. an if u leave that field defined narrowly, then the associated claims may be interpreted too narrowly.
The related art in the background section is also very critical as in case of US describing any related art may get applicant into trouble. While I will sometimes list references, I recognize the risk of describing the contents of a reference in that the description may misrepresent the scope of the reference, potentially leading to accusations of intentionally misleading the examiner. Therefore, I often describe the prior art in general terms, without explicitly delineating related art references. 

It have come to know that in some countries it is necessarily to include prior art references in the Background section in response to an examiner request, and this can still be done in a revised Background section that was originally relatively short.   
I personally think that minimizing the content of the Background section in US patent applications. What are the readers’ experiences and opinions? 
Please share your views in comment section.

Exclusion From Patentable Subject Matter: Japan & UK

Japan

1. Inventions contrary to public order, morality or public health.
2. Methods for the treatment of humans. 

United Kingdom

1. Discoveries, scientific theories and mathematical methods.
2. Literary, dramatic, musical and artistic works.
3. Aestheticcreations.
4. Schemes, rules and methods for performing mental acts, playing games or doing business. 5. Computer programs. 

6. Presentation of information.
7. Therapeutic, surgical and diagnostic methods for treating humans or animals. 8. Inventions contrary to public policy or morality. 

9. Plant and animal varieties and essentially biological processes for their production, other than:
(a) microbiological methods and products;
(b) inventions whose technical feasibility of the invention is not confined to a particular plant or animal variety;
(c) products consisting of or containing biological material;
(d) processes producing, processing or using biological material;
(e) biological material isolated from its natural environment or produced by a technical process, even if previously occurring in nature.
10. The human body, at any stage of its formation and development or the simple discovery of its elements, including gene sequences, other than elements isolated from the human body or produced by a technical process.
11. Processes for cloning humans; modifying the germ line genetic identity of humans; uses of human embryos for industrial or commercial purposes; and processes for modifying the genetic identity of animals which are likely to cause them suffering without any substantial medical benefit, and animals resulting from such processes.

Exclusions from Patentable Subject Matter - India

The exclusion from Patentable Subject Matter for India Patent Office are:

1. Inventions which are frivolous or obviously contrary to well established natural law.
2. Inventions use or commercial exploitation of which is contrary to law or morality or causes serious prejudice to human, animal, or plant life or health or to the environment.
3. Discoveries of a scientific principle or formulation of an abstract theory or discovery of any living thing or non- living substance occurring in nature.
4. Mere discovery of a new form of a known substance which does not enhance known efficacy, or the mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant.
5. Substance obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance.
6. Mere arrangement or re-arrangement or duplication of known devices each functioning independently in a known way.
7. Agricultural and horticultural methods.
8. Any processes for medicinal, surgical, curative, prophylactic , diagnostic, therapeutic or other treatments of humans or any process for a similar treatments of animals or plants to render them free of disease or increase economic value.
9. Plants and animals in whole or any part thereof other than microorganisms, but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals.
10. Mathematical or business method or a computer program per se or algorithms.
11. Literary, dramatic, musical or artistic work or any other aesthetic creation whatever.
12. Mere scheme or rule or method of performing mental act or method of playing game.
13. Presentation of information.
14. Topography of integrated circuits.
15. Invention which, in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component(s).
16. Inventions relating to atomic energy.

Prior art definition: Top Countries

United States of America 

1. An invention which was known or used by others in US, or patented or described in a printed publication in US or a foreign country, before the invention by the applicant;

2. An invention which was patented or described in a printed publication in US or a foreign country or in public use or on sale in US, more than one year before the filing date;

3. An invention abandoned by the applicant;

4. An invention which was patented, or was the subject of an inventor's certificate filed by applicant or his legal representatives or assignees in a foreign country more than 12 months prior to the filing date;

5. An invention which was described in a published US patent application by another or in a patent filed by another before the invention by the applicant (for the PCT international applications, only if they designate US and are published in English language);

6. During the course of interference, another inventor establishes that, before the invention date, he/she invented the invention and not abandoned, surpressed or concealed the invention; or another inventor made the invention in US before the invention date and he/she had not abandoned, surpressed or concealed the invention.

Japan

1. Anything which, before the filing date (priority date), was publicly known or worked, published, or made available to the public through electric telecommunication lines.
2. Contents of certain Japanese patent and utility model applications with an earlier filing date (priority date).

India

Publication in any document or used in India or elsewhere in the world before the filing date (priority date).