Q178 draft report.pdf - SFIR

10
relevant references. The same concern of Examiner’s relevant
knowledge of course applies to the application of the traditional
patentability criteria to a field of technology not previously examined for
patentability and which is not altogether researched.
4.3 What do you see as possible solutions for these problems?
Would further harmonization of the laws help to solve such
problems and, if so, in which way?
Sweden follows the EPO case law and, thus, the granting and validity
aspects seem to be harmonized from a European perspective.
Therefore, it is not a harmonization of patentability requirement such as
that of inventive step that is an issue, but, if at all, it is the stringency of
the application of, for example, inventive step at the EPO that may be a
concern.
In this context, the Swedish Group would like to suggest that further
study be made on the effects which may result from the manner in
which the test for non-obviousness on basis of a combination of prior
art references is regulated in the USPTO, in the EPO and in the JPO.
Citation by a USPTO Examiner of a combination of prior art references
requires the Examiner to show the teaching or motivation to combine
these cited prior art references. This practice should be compared with
the corresponding rules in the examination procedures in the EPO and
in the JPO, in order to establish possible different effects on the
breadth of granted claims, for example in the biotechnology area. The
Swedish Group believes that a harmonization of the granting procedure
is desirable, including harmonization of the concepts non-obviousness
and inventive step.
Harmonization of infringement doctrines can help solving possible
problems regarding breadth of protection allowed to patentable subject
matter. Especially in situations when the patentee is granted the same
set of claims and specification in each designated member state under
the EPO-route and, therefore, is unable to tailor the claims to a specific
doctrine.
Regarding the search and examination stage, it is the opinion of the
Swedish Group that such problems mainly concern quality system
10