Substantive examination

PrintPDF Share

During the substantive examination of the application the Patent Office shall assess novelty, inventive step and industrial applicability of the invention (Patents Act § 8).

The novelty of an invention shall be assessed taking into account the concept of absolute novelty. According to this principle, the novelty is determined on the basis of worldwide patent information and information provided in reference books in science and technology and product catalogues. Likewise, information disseminated by the press or broadcasted by a radio, TV or the Internet, and public use and display at an exhibition of the invention, shall be taken into account. The same principles also apply to the determination of inventive step. The requirement of industrial applicability is met when the use of the invention does not depend on the individual abilities of the user, on random factors or undetermined conditions.

In the beginning of processing an examiner of the Patent Office carries out the state of the art search in field the invention belongs to. The search results are forwarded to the applicant. Taking into account the results of the search the applicant may make amendments to the patent application. Though, the extent to which the amendments can be made, is limited. The applicant should not change the subject matter of an invention nor the scope of patent protection as disclosed in the original application (Patents Act § 25).

Corrections and amendments are deemed to alter the subject matter of an invention if they contain essential technical features of the invention or patent claim. Correction or supplementation of drawings is especially sensitive from the viewpoint of altering the subject matter of an invention. The scope of patent protection shall be determined by the wording of the independent patent claim. The scope of definitions contained in the patent claims should not be extended after the publication of the patent application.

The examiner shall inform the applicant of circumstances which hinder the processing of the application and shall require the elimination of deficiencies or provision of explanations (Patents Act § 23 (2)).

Last modified 22.02.2017