Q178 draft report.pdf - SFIR

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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
11 issues. Further developments of documentation systems and sharing of examination results between patent offices can therefore minimize problems of this kind. Relevant training and hiring of specialists in the various fields of examination are fundamental. Summary The technical fields involved are primarily biotechnology and computer software/business methods. Also protection of traditional knowledge is under discussion. The Swedish/EPC patent system is considered to be appropriately balanced, and flexible enough to operate foreseeable needs for further protection within existing or new fields of technology. Strict application of the patentability criteria, specifically inventive step and sufficient disclosure, is necessary to commensurate with the scope of granted claims. Further development of quality system issues, documentation systems, sharing of examination results between patent offices, training and hiring of examination specialists, and harmonization of infringement doctrines are examples of areas for further study. 11
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