Innovation and Rights - Developing Biomedical Devices: Design, Innovation and Protection - page 41

To be novelty destructive, any disclosure must be carried out with regard to skilled
persons who can understand and implement the invention.
An invention is not considered to be disclosed if it is communicated to per-
sons legally bound to secrecy either by law (company employees) or by contract
(because they have signed a confidentiality agreement).
Summarizing, novelty is lacking when in a single document the reproduction of
the invention, or rather of the essential technical features thereof, may be found;
then novelty is lost.
3.3.2 Inventive Step (Article 56: EPC)
An invention shall be considered as involving an inventive step if, having regard to
the state of the art, it is not obvious to a person skilled in the art. If the state of the
art also includes documents within the meaning of Article 54, Paragraph 3, these
documents shall not be considered in deciding whether there has been an inventive
step.
Art. 48 (Legislative Decree No. 30 of 10 February 2005)
An invention shall be considered as involving an inventive step if, hav-
ing regard to the state of the art, it is not obvious to a person skilled in the art.
If the state of the art also includes documents within the meaning of Article 46,
Paragraph 3, these documents shall not be considered in deciding whether there
has been an inventive step.
3.3.2.1 Comments
An invention is new if it is different from the prior art and not obvious when it is
substantially different.
The requirement of inventiveness is intended to exclude the patenting of all that
is but a manifestation of the normal technical progress, although it is new.
Compared to novelty, the state of the art that is considered for assessing the
inventive step, does not include patent applications not yet published.
An invention lacks inventive step if it reproduces substantially the same func-
tion or the same result of a prior art document.
A solution which a person skilled in the art would achieve without a particular
intellectual effort, or through a trivial and obvious combination of two or more
prior art documents, is not original.
To assess the requirement of inventive step, it is necessary to put a few ques-
tions, namely [ 18 ]:
1. how can relevant documents be found?
2. how do they combine with each other?
The prior art search cannot be done without limits.