Trend of A Concept, “Suggestion” In Determining Inventive Step with Some Implications on the Relationship between Development of Search Technology on Internet and Inventive Step

Abstract

In determining inventive step, we submit a principle cited invention and identify the difference between a claimed invention and the principle cited invention (first step), and then examine whether a person having an ordinary skill in the prior art would easily reach at the claimed invention(the second step). As Internet search engine makes dramatic progress, it is reducing the difficulty of the first step, and as a result, the importance of the second step judgment increased. The first purpose of this paper is to clarify current state of the concept of “suggestion,” which is one of factors playing an important role in the second step. It is found that many cases in Japan use the concept of “Teach Away”(the opposite concept of suggestion) in addition to the concept of suggestion which combines a principle cited invention and a secondary cited invention. This paper also discussed the relationship between the second step and IT technology.