E
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`SCP/22/3
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`ORIGINAL: ENGLISH
`
`DATE: JULY 6, 2015
`
`
`
`
`
`Standing Committee on the Law of Patents
`
`
`
`Twenty-Second Session
`Geneva, July 27 to 31, 2015
`
`
`
`STUDY ON INVENTIVE STEP
`
`Document prepared by the Secretariat
`
`
`
`INTRODUCTION
`
`At its twenty-first session, held from November 3 to 7, 2014, the Standing Committee on
`1.
`the Law of Patents (SCP) confirmed that, in accordance with the agreement made at its
`twentieth session, a study on inventive step would be prepared by the Secretariat and be
`submitted to the twenty-second session of the SCP. The Committee agreed that the study
`would contain the following elements: (i) the definition of the person skilled in the art;
`(ii) methodologies employed for evaluating an inventive step; and (iii) the level of the inventive
`step. The Committee also agreed that the study would be based on the information provided by
`Member States, and would be a collection of factual information without analysis or
`recommendation.
`
`Pursuant to the above decision, Member States and regional patent offices were invited,
`2.
`through Note C. 8403, dated December 15, 2014, to submit information to the International
`Bureau on the above elements under the applicable law. Taking into account the submitted
`information,1 the Secretariat prepared a study on inventive step, which is contained in this
`document.2
`
`
`
`
`
`
`1
`The information submitted by Member States and regional offices are available in full on the website of the
`SCP electronic forum at: http://www.wipo.int/scp/en/meetings/session_22/comments_received.html.
`In accordance with the WIPO language policy, this document is available in English only. A summary of this
`document, SCP/22/3 SUMMARY, is available in six languages.
`
`2
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` PETITIONER VALVE CORPORATION, EX. 1026, p. 001
`IPR2016-00948 - 00949
`VALVE CORP. v. IRONBURG INVENTIONS LTD.
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`

`SCP/22/3
`page 2
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`INVENTIVE STEP – GENERAL DESCRIPTION AND HISTORY3
`
`3. One of the patentability criteria is that a claimed invention must exhibit a sufficient
`“inventive step” or must be non-obvious. The inclusion of such a requirement in the
`patentability criteria is based on the premise that patent protection should not be given to
`anything that a person with ordinary skill could deduce as an obvious consequence of what is
`already known to the public.4 An invention that is simply obvious in relation to the existing art
`would contribute very little, if anything at all, to society. Granting the exclusive patent rights on
`such an invention with minor improvement to the existing art would not support the objective of
`the patent system. As one scholar stated, the inventive step or non-obviousness is in some
`respects the heart and soul of patentability, separating the truly innovative wheat from the chaff
`of unpatentable minor improvements.5
`
`In the early 19th century, national patent laws generally required patentable inventions to
`4.
`be new and useful (or industrially applicable). However, the origin of the notion of inventive step,
`although vague and undefined, can be traced back to the Venetian Statute in the Middle Age.
`In the second half of the 15th century, Venice granted monopoly privileges for improved
`industrial devices developed by “skill and experience”, “pertinent thoughts and labors” or “efforts,
`study and ingenuity” of applicants. This notion, however, was lost when the principles of the
`Venetian system were transmitted to England. The Statute of Monopolies (1623) had required
`novelty, but not inventive step, and remained the same for more than two centuries.6
`
`The origin of the modern inventive step/non-obviousness concept can be traced back to a
`5.
`provision contained in the French Patent Law of May 25, 1791, which provided in essence that
`simply changing the form or propositions of any kind is not deemed to be an invention to be
`protected by the Patent Law. Probably inspired by the French law, the 1793 Act of the United
`States of America contained a provision stating that “simply changing the form or the
`propositions of any machine, or composition of matter, in any degree, shall not be deemed a
`discovery”. The expression “form or propositions” included in the laws of those two countries,
`however, had developed very differently. In France, whether an invention involves substantive
`advancement or not had become a question of minor importance for the determination of the
`patentability.
`
`6. On the contrary, in the United States of America, courts gradually developed the
`interpretation of the term “form or propositions”. Although the Patent Act of 1836 eliminated the
`statutory language barring patents on mere changes in form or propositions, the lack of a
`statutory provision merely resulted in allowing courts to develop the form or propositions
`doctrine to a much more complex and general rule.
`
`
`
`
`3
`The description of the historical origin of the inventive step is based on the following literatures: Paul Cole,
`KSR and Standards of lnventive Step: A European View, J. Marshall Rev. Intell. Prop. L., Vol. 8 (2008), pp.14-
`46; John F. Duffy, Inventing Invention: A Case Study of Legal Innovation, Texas Law Review, Vol. 86 (1)
`(2007); Edmund W. Kitch, Graham v. John Deere Co.: New Standards for Patents, The Supreme Court
`Review, Vol. 1966 (1966), pp. 293-346; John Richards and others, KSR v. Teleflex: The Non-Obviousness
`Requirement of Patentability, Fordham Intellectual Property, Media and Entertainment Law Journal,
`Vol. 17 (4) (2007), pp. 875-914.
`WIPO Intellectual Property Handbook: Policy, Law and Use, paragraph 2.25.
`Elizabeth A. Richardson, Back to the Graham Factors: Nonobviousness after KSR v. Teleflex, in Toshiko
`Takenaka (ed.), Patent Law and Theory-A Handbook of Contemporary Research (Edward Elgar Publishing,
`2008). According to the submission by the Eurasian Patent Office (EAPO), 71% of the Eurasian patents
`challenged under the EAPO administrative revocation procedure were revoked on the grounds of non-
`compliance with the inventive step requirement. For the Eurasian patents revoked by EAPO Member States,
`57% of revoked patents were found unpatentable due to the lack of inventive step.
`The lack of an inventive step requirement in the statute may be due to the fact that obtaining a patent in
`England in the 17th and 18th centuries was very difficult and expensive. See John F. Duffy, “Inventing
`Invention: A Case Study of Legal Innovation”, Texas Law Review, vol. 86(1), 2007.
`
`4
`5
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`6
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` PETITIONER VALVE CORPORATION, EX. 1026, p. 002
`IPR2016-00948 - 00949
`VALVE CORP. v. IRONBURG INVENTIONS LTD.
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`SCP/22/3
`page 3
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`
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`The origin of the non-obviousness requirement in the United States of America is
`7.
`generally attributed to the Supreme Court opinion in Hotchkiss v. Greenwood. The case
`concerned a doorknob made of clay or porcelain as opposed to already available knobs made
`of wood or metal. The Supreme Court broadly held that “every invention” must be the product
`of “more ingenuity and skill […] than were possessed by an ordinary mechanic acquainted with
`the business”.7 The vagueness in Hotchkiss, particularly the expression “more ingenuity and
`skill”, left courts to determine how much more ingenuity and skill was needed to obtain a patent.
`There decisions were not consistent. There were decisions that appeared similar to the modern
`understanding of non-obviousness.8 At the same time, there were also decisions that
`interpreted the test more stringently.9 As the various interpretations of the standard by courts
`created legal uncertainty and raised practical difficulties, the United States Congress finally
`stepped in, and enacted Section 103 of the 1952 Patent Act, which provided that a new and
`useful advance would be considered unpatenable if it would have been obvious at the time of
`the invention was made to a person having ordinary skill in the art to which said subject matter
`pertains.
`
`Turning to England, the English courts struggled with a patentability standard that required
`8.
`only novelty and utility for the most of the 19th century. The concept of obviousness was initially
`developed in England through the writings of legal scholars aware of the legal developments in
`the United States of America. The gradual transition started with cases involving a device
`known for one particular use was applied to another closely analogous use. In deciding those
`cases, some English courts started to apply a somewhat broader concept of the “novelty”
`requirement through employing a legal fiction, i.e., applying existing technology in a different but
`analogous manner or to an analogous purpose did not really involve anything new.10
`
`From those cases, the general conceptual framework of obviousness that encompassed
`9.
`all types of inventions was developed. In Blakey v. Latham (1889), it was stated that an
`invention is not to be called new “simply because that has never been seen before. To be new
`in a patent sense, it was necessary that the novelty must show invention”. In Thomson v.
`American Braided Wire Company (1889), the court extended the analogous use precedents to
`consider whether the components (not the whole) of the alleged invention were being used in
`ways analogous to their uses in the prior art. Following that decision, in Williams v. Nye (1890),
`the Court of Appeal invalidated a patent on a machine combining a known mincer and a known
`sausage filling machine, where meat mincing had previously been combined with sausage filling
`in a single machine. In Vickers, Sons & Co. v. Siddell (1890), the court held that the key
`question was whether “this mode of dealing with forgings […] was so obvious that it would at
`once occur to anyone acquainted with the subject and desirous of accomplishing the end, or
`whether it required some invention to devise it”. Those developments culminated in the
`codification of the concept of obviousness as a requirement of inventive step in the Patents and
`Designs Act 1932. It required that, to be patentable, an invention should involve “an inventive
`step having regard to what was known or used prior to the date of the patent”.
`
`
`
`7
`52 U.S. 248 (1851), 267.
`8
`In Pearce v. Mulford, 102 U.S. 112 (1880), the court described a patentable invention as involving “something
`more than what is obvious to persons skilled in the art to which it relates”. In Atl. Works v. Brady, 107 U.S.192
`(1883), the court compared an invention which “adds to our knowledge and makes a step in advance in useful
`arts” with an unpatentable “trifling device, every shadow of a shade of an idea, which would naturally and
`spontaneously occur to any skilled mechanic or operator in the ordinary progress of manufacture”.
`For example, in Cuno Eng’g Corp v. Automatic Devices Corp, 314 U.S. 84 (1941), the Supreme Court held
`that a patentable invention “must reveal the flash of creative genius, not merely the skill of the calling”.
`No novelty was found where the new adaptation was something that naturally suggest to a person turning his
`mind to the subject, while patents should be awarded only to those new adaptations that require some
`application of thought and study (Penn v. Bibby (1866) 2 L.R. Ch.127, 136).
`
`10
`
`9
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`SCP/22/3
`page 4
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`10. A similar course of legal development is also found in other countries. For example, in
`Germany, the Imperial Patent Act of 1877 relied on the requirements of novelty and industrial
`applicability to define what could be patentable. The requirement of “inventivity” and being “a
`technical advance in the art” stemmed from court decisions over the following decades.
`
`11. While the history shows that the concept of non-obviousness as a prerequisite for patent
`grant did not develop in a linier and continuous manner, the requirement of inventive step or
`non-obviousness is in principle embraced by all countries. According to the data covering 101
`national patent laws and five regional laws,11 the vast majority of national/regional laws express
`this idea that the claimed invention shall involve inventive step (or be non-obvious) in the
`following manner or something akin to it: the invention is not obvious to a person skilled in the
`art, having regard to the prior art.12,13 Although some national laws provide additional explicit
`clarifications at the legislation level14, in general, the inventive step (non-obviousness)
`provisions in patent laws lay down no more than a general principle, which is applied to each
`specific case. Such an approach may be suitable for the application of the patentability criteria
`to each invention on its merit, bearing in mind that inventions may relate to a different field of
`technology. It also accommodates future technological development that cannot be foreseen.
`
`12. On the other hand, the fact that the law only provides a general principle causes a
`particular challenge in determining the inventive step. Unlike factual comparison between a
`claimed invention and prior art in determining the novelty, a vaguer, qualitative yardstick is used
`in assessing the inventive step.15 Therefore, clarification or interpretation of the legal provision
`beyond the letter of the law and development of a methodology for assessing the inventive step
`in each jurisdiction feed continued development of the inventive step requirement. While
`judicial interpretation of law is set by jurisprudences, many patent offices issue administrative
`search and examination guidelines in order to ensure the objectivity and consistency of
`assessments made by patent examiners. They often articulate how the legal requirement could
`be applied to each specific case. In countries where administrative guidelines are made
`available to the public, they also play an important role in providing guidance to applicants and
`third parties. While administrative guidelines do not have the same legal status as legislations
`and should be careful in its use, they provide useful information for the understanding of
`inventive step applied in each jurisdiction.
`
`
`
`
`
`12
`
`
`11
`Certain Aspects of National/Regional Patent Laws: Inventive Step
`(see http://www.wipo.int/scp/en/annex_ii.html).
`The exceptions are found in the laws of Japan and the Republic of Korea (a person skilled in the art “would
`have been able to easily make the invention” based on prior art) and China (“compared with prior art, the
`invention has prominent substantive features and represents a notable progress”). The applicable law of
`Viet Nam states that an invention shall be considered involving an inventive step if, based on the prior art, it
`“constitutes an inventive progress and cannot be easily created by a person with average knowledge in the
`art”.
`The definition of prior art (or the state of the art) relevant to the assessment of the inventive step under
`national laws is outside the scope of this document. On this subject, see document SCP/6/INF/2 in which
`responses to the questionnaire concerning the definition of prior art is summarized.
`For example, the laws of Australia and Papua New Guinea explicitly states that common general knowledge is
`taken into account for the assessment of inventive step. In the United States of America, the law explicitly
`states that, to be obvious from the prior art, the subject matter as a whole would have been obvious before the
`effective filing date of the claimed invention. The Patents Act of India, in Section 2(1)(j)(a), states that an
`"inventive step" means a feature of an invention that involves technical advance as compared to the existing
`knowledge or having economic significance or both and that makes the invention not obvious to a person
`skilled in the art.
`15 W. R. Cornish, Intellectual property: Patents, Copyright, Trademarks and Allied Rights, Sweet & Maxwell,
`London (1999), p.192.
`
`13
`
`14
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` PETITIONER VALVE CORPORATION, EX. 1026, p. 004
`IPR2016-00948 - 00949
`VALVE CORP. v. IRONBURG INVENTIONS LTD.
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`SCP/22/3
`page 5
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`DEFINITION OF THE PERSON SKILLED IN THE ART (PSIA)
`
`In general, the determination of the involvement of an inventive step is based on the
`13.
`assessment made by a “person skilled in the art”.16 Some national laws explicitly state that this
`person has “average”17 or “ordinary”18 skill, while many jurisdictions interpret the level of the
`required skill in a similar manner without explicitly prescribing it in their laws (see below). The
`Agreement Revising the Bangui Agreement of March 2, 1977, on the Creation of an African
`Intellectual Property Organization (OAPI) refers to a “person having ordinary knowledge and
`skill in the art”. In this document, the term “person skilled in the art (PSIA)” is used as a
`representative term for the consistency within the document.
`
`14. Beyond the expressions above, no national/regional law explains or defines the term. In
`some countries, jurisprudences or administrative guidelines provide guidance on the meaning of
`the term.
`
`15. As a starting point, the explanation of the expression “person skilled in the art” in the PCT
`International Search and Preliminary Examination Guidelines, paragraph 13.11 may be
`highlighted as an illustrative example:
`
`
`“13.11 The person skilled in the art should be presumed to be a hypothetical person
`having ordinary skill in the art and being aware of what was common general knowledge in
`the art at the relevant date. He should also be presumed to have had access to everything
`in the “prior art,” in particular, the documents cited in the international search report, and to
`have had at his disposal the normal means and capacity for routine experimentation. If the
`problem on which the invention is based and which arises from the closest prior art
`prompts the person skilled in the art to seek its solution in another technical field, the
`person skilled in the art in that field is the person qualified to solve the problem. The
`assessment of whether the solution involves an inventive step must therefore be based on
`that specialist’s knowledge and ability. There may be instances where it is more
`appropriate to think in terms of a group of persons, for example, a research or production
`team, than a single person. This may apply, for example, in certain advanced technologies
`such as computers or telephone systems and in highly specialized processes such as the
`commercial production of integrated circuits or of complex chemical substances.”
`
`
`It captures a number of common elements in the interpretation of the term “person skilled
`16.
`in the art” in many national/regional jurisdictions.
`
`Hypothetical person
`
`17. A PSIA is a hypothetical person. It is a fictitious person whose knowledge and skill will
`provide a basis for assessing whether the claimed invention involves an inventive step. It is not
`the inventor of the invention or a patent examiner who examines the application. Nor is it a
`prospective customer, purchaser or contractor of the claimed subject matter19.
`
`18. The exact level of knowledge and skill of this fictitious character needs to be defined for
`each concrete individual case, depending on the nature of the claimed invention, based on the
`
`17
`
`18
`
`
`16
`The laws of a small number of countries (Algeria, Sudan, Zambia) do not explicitly provide by whom the
`claimed invention is considered obvious.
`For example, the applicable laws of Argentina, Chile, Colombia, Costa Rica, Ecuador, Israel, Panama, Peru,
`the Syrian Arab Republic and Viet Nam.
`For example, the applicable laws of Bahrain, Barbados, El Salvador, Ghana, Japan, Jordan, Malaysia,
`Mauritius, the Republic of Korea, Saudi Arabia, Sri Lanka, Thailand, the United States of America, GCC Patent
`Office and OAPI.
`German Federal Court of Justice, 17 November 2009 -X ZR 49/08 – Hundefutterbeutel.
`
`19
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`SCP/22/3
`page 6
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`
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`applicable jurisprudence. Therefore, a PSIA could be anyone from a tradesman in some arts to
`a highly qualified scientist in others depending on the nature of the problem.20 In Hughes
`Aircraft Company v. The State of Israel, CA 345/87, (2.7.1990)), the US Supreme Court stated
`that a PSIA is a fictional figure that may possess different knowledge in different professional or
`scientific fields, depending on their technical or research nature.21
`
`19. Assessing the claimed invention from the eyes of a hypothetical person enables the
`objective analysis of the invention. An examiner or a person assessing inventive step should
`attempt to place himself/herself in the shoes of the PSIA.22 On the basis of training and
`experience, a person should be able to put himself/herself in the position of the PSIA in
`determining the involvement of inventive step.23
`
`The level of skill in the relevant art
`
`In many countries, a PSIA is deemed to have ordinary or average skill in the relevant art
`20.
`on the relevant date. The relevant date is the filing date of the patent application concerned, or
`where priority is claimed, the priority date. In order to maintain the objectivity of the
`obviousness assessment, it is important to resolve the level of ordinary or average skill of a
`PSIA.24
`
`21. The PSIA is not the “mechanician of genius nor […] the mechanical idiot”.25 This is a
`typical professional possessed of the knowledge common to such professionals.26 In many
`countries, the PSIA is deemed to have “average” skill. According to the Guidelines used in
`many Latin American countries, the PSIA “refers to a person with average knowledge, not
`someone who is specialized”, and thus the level of PSIA’s knowledge, skill and abilities is
`considered higher than those of the general public, but do not exceed those expected from a
`duly qualified person.27 In Viet Nam, a person with average skill in the art means a person who
`has ordinary technical practice skills and is acquainted with publicly available general
`knowledge in the art.28
`
`22. The PSIA’s knowledge of the state of the art is only what is expected of an average
`professional knowledge, and his level of knowledge depends on the very nature of the relevant
`technology.29 In the United States of America, factors that may be considered in determining
`the level of ordinary skill in the art may include: (i) type of problems encountered in the art;
`(ii) prior art solutions to those problems; (iii) rapidity with which innovations are made;
`(iv) sophistication of the technology; and (v) educational level of active workers in the field. In a
`given case, every factor may not be present, and one or more factors may predominate. In
`
`22
`23
`24
`25
`26
`27
`
`
`20
`See the submission by Australia.
`21
`Hughes Aircraft Company v. The State of Israel, CA 345/87, (2.7.1990)). Similarly, the submission by the
`Slovak republic notes that the level of knowledge and professional skills of the fictitious person skilled in the art
`differs in individual cases, notably in regard to the technical field to which the invention pertains.
`See the submission by Singapore.
`See the submission by Spain, referring to a court decision of May 9, 2008.
`Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718, 21 USPQ2d 1053, 1057 (Fed. Cir. 1991).
`Van der Lely NV v Bamfords Ltd [1961] RPC 296 (see the submission by Singapore).
`Decision of the Barcelona Commercial Court No.4, dated January 7, 2014 (Spain).
`The Manual for Examination of Applications for Patents for Inventions in the Industrial Property Offices of the
`Countries of the Andean Community (Andean Manual) and the Manual for the Organization and Review of
`Patent Applications of the Industrial Property Offices of the Countries of Central America and the Dominican
`Republic (Central American Manual).
`Point 23.6.a of the Circular No. 01/2007/TT-BKHCN OF February 14, 2007 of the Ministry of Science and
`Technology guiding the implementation of the Government’s Decree No. 103/2006/ND-CP of September 22,
`2006.
`See the submission of the OAPI.
`
`28
`
`29
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`SCP/22/3
`page 7
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`
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`some countries, to identify the PSIA, the starting point must be the technical problem that the
`invention aims and claims to solve.30
`
`23. From the above, it could be deduced that the PSIA’s average or ordinary skill is not the
`average of a layperson’s skill (the minimum knowledge and skill) and a top specialist’s skill (the
`maximum knowledge and skill), but rather the skill expected to be possessed by an ordinary,
`duly qualified practitioner in the relevant field.
`
`In India, the Intellectual Property Appellate Board (IPAB) pointed out the difference in the
`24.
`words “a person skilled in the art” used in the legal provision with respect to the requirement on
`inventive step and the words “a person who has average skill and average knowledge” used in
`the provision concerning the enabling disclosure requirement.31 While the IPAB did not
`articulate the difference between those two expressions, it stated that a person skilled in the art
`relevant to the assessment of the inventive step “has read the prior art and knows how to
`proceed in the normal course of research with what he knows of the state of the art. He does
`not need to be guided along step by step. He can work his way through. […] he is neither
`picking out the ‘teaching towards passages’ like the challenger, nor is he seeking out the
`‘teaching away passage’ like the defender.”32
`
`In practice, there are many common or similar elements that characterize the level of skill
`25.
`of the PSIA across the jurisdictions. These elements may be summarized as follows.
`
`
`The PSIA is presumed to have had access to all publicly available state of the art
`(i)
`information.
`
`(ii) The PSIA is able to comprehend all technical matters in the relevant art.
`
`In some countries, the PSIA is presumed to be able to comprehend all technical matters in
`26.
`the field relevant to problems to be solved by the inventions.33 The relevant art includes
`adjacent art, such as technical matters in the field relevant to the problems to be solved by the
`inventions.34
`
`
`(iii) The PSIA possesses normal/ordinary knowledge of the technology in question.
`
`27. The PSIA is a skilled practitioner in the relevant field of technology, who possesses
`average knowledge and ability in the art at the relevant date35 or general knowledge in the
`relevant field36.
`
`(iv) The PSIA possesses ordinary practical skill in the technical field in question.
`
`28. The PSIA is presumed to be well acquainted with workshop technique37, ordinary
`technical practice skills38 or know-how in the technical field of the invention39.
`
`30
`The EPO Boards of Appeal, T 422/93 and the decision of the Barcelona Commercial Court No.4, dated
`January 7, 2014 (Spain).
`Enercom vs Aloys Wobben, ORA/08/2009/PT/CH (Order No. 123 of 2013).
`Ibid, referring to Sankalp Rehabilitation Trust vs Hoffman-Roche, OA/8/2009/PT/CH.
`See the submissions by Japan, Switzerland and France (Cf. in particular the Court of Cassation, Civil Division,
`Commercial Division dated November 20, 2012 N.11-18.440).
`See the submission by Bulgaria and the Japanese Examination Guidelines, Part II, Chapter 2, 2.2.
`EPO Technical Boards of Appeal decisions, T 4/98, T 143/94 and T 426/88. See also the submission of
`Mexico and the decision of the Court of Cassation, Commercial Division dated October 17, 1995 and
`November 20, 2012 in France.
`See the submission of Turkey and Viet Nam.
`See the submission by Singapore.
`See the submission by Viet Nam.
`
`36
`37
`38
`
`31
`32
`33
`
`34
`35
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`SCP/22/3
`page 8
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`The PSIA is aware of or possessing common general knowledge in the relevant art
`(v)
`at the relevant date.
`
`29. The PSIA is also able to combine information disclosed in cited documents with common
`general knowledge in their technical field, for instance with a well-known technical teaching of a
`handbook.40 Depending on the nature of the technology, the common general knowledge may
`be possessed by a relatively few number of skilled practitioners in certain cases, while it is not
`considered part of the common general knowledge unless it is possessed by a larger number of
`those skilled practitioners in other cases.41 According to French case law, a person skilled in
`the state of the art does not possess any professional knowledge with regard to an area of
`specialization other than his own.42 It however admits that a PSIA may possess knowledge that
`is more general in nature and not necessarily linked to the specific field in question, or
`knowledge of neighboring fields posing identical or similar technical problems.
`
`It is important to distinguish common general knowledge from public knowledge – just
`30.
`because something is in the public domain does not make it part of the common general
`knowledge. The submission by Singapore noted that in most cases, an assertion that certain
`information forms part of common general knowledge should be supported by documentary
`evidence.43 A description in standard textbooks will provide a strong indication of being the
`common general knowledge.44 It may also be assumed that a scientific paper that is widely
`cited has entered into the common general knowledge. Further, a set of industry standards
`may be considered to be part of the common general knowledge. As confirmed by a court
`decision,45 in Singapore, it is not expected that a PSIA would know the information, but rather
`that he would know where to find the relevant information.
`
`(vi) The PSIA has the average skill and the capacity to use prior art as is usual for the
`technical field in question.
`
`31. The PSIA, having access to all prior art information, has the average skill and capacity to
`use that prior art information as is usual for the technical field in question.46 The PSIA is able to
`use ordinary technical means for R&D.47
`
`
`(vii) The PSIA is availed of the normal means and capacity for routine experimentation in
`order to, for example, clarify ambiguities on known technology.
`
`
`32. The PSIA is dispose of the usual means, ability and experience to perform routine
`experimentation.48 The PSIA, who is in disposal of normal tools and skills, is expected to
`
`
`[Footnote continued from previous page]
`39
`40
`
`See the submission by Mexico.
`See the submissions by, for example, Australia, China, Colombia, Finland, the Republic of Moldova and the
`Russian Federation.
`See the submission of Singapore. According to the decision of the EPO Boards of Appeal, T 475/88, however,
`a single publication cannot normally be considered as common general knowledge.
`Decision of the Court of Cassation, Commercial Division, dated February 26, 2008.
`Similarly, the EPO Guidelines for Examination in the EPO, Part G, Chapter VII-2, 3.1 states that an assertion
`that something is common general knowledge need only be backed by documentary evidence (for example, a
`textbook) if this is contested.
`See also the EPO Boards of Appeal, T 171/84.
`Nokia v Ipcom [2010] EWHC 3482.
`See the submissions by, for example, Finland and Turkey.
`See the submissions by Japan and the Republic of Korea.
`See the submissions by, for example, Argentina, Finland, Morocco, Spain and the EPO.
`
`41
`
`42
`43
`
`44
`45
`46
`47
`48
`
` PETITIONER VALVE CORPORATION, EX. 1026, p. 008
`IPR2016-00948 - 00949
`VALVE CORP. v. IRONBURG INVENTIONS LTD.
`
`

`

`SCP/22/3
`page 9
`
`
`
`perform experiments in order to clarify ambiguities on known technology, without employing
`inventiveness.49
`
`
`If the problem prompts a search in another technical field, a PSIA in that field is the
`(viii)
`person