Notorious knowledge - tips for patent applicants
Notorious knowledge, otherwise known as indisputable general knowledge or notorious prior art, refers to the mechanism by which an examiner relies on a purported 'notorious' technical teaching without explicitly referencing a document in which the technical teaching can be found. Notorious knowledge is usually cited when a claimed invention contains a mixture of technical and non-technical elements. An archetypal example of this would be a generic personal computer system as would have been known at the effective filing date of an application.
The legal basis for such notorious knowledge comes from the Technical Board of Appeal's decision in T 1242/04 which sets out the principle that, where a technical feature is extremely well known, the Examining Division is not obliged "to carry out an additional search for documented prior art on purely formal grounds".
T 690/06 and T 1411/08 specify that the term 'notorious' has to be interpreted narrowly, and require that the technical feature in question should be "so well known that its existence at the date of priority cannot be reasonably disputed" and that the "technical detail is not significant".
However, faced with the option of asserting that technical features of a claim are known without the need to explicitly reference a document, it could be said that certain examiners have overused notorious knowledge. Two particular problems have arisen: the failure to specify exactly which features an alleged notorious teaching is purported to embody; and the related temptation to automatically dismiss all non-physical features, or features involving non-technical concerns, as entirely non-technical.
Two recent decisions of the Technical Boards of Appeal should be of great help to applicants, serving to clarify how examiners should use notorious knowledge.
T 359/11 arose from the refusal of an application by the Examining Division on the grounds of inventive step in which no documentary evidence of the prior art was provided, due to the alleged notoriety of the technical features. During prosecution, the applicant attempted to add a number of new technical features to the claim, but the Examining Division maintained that no documentary evidence was needed.
Beyond reiterating that notorious knowledge must be interpreted narrowly, the Board of Appeal emphasised that "it is always incumbent upon the Examining Division to consider whether an additional search is necessary" and that an examiner should not refuse an application on the grounds of inventive step where there is at least one non-notorious technical feature. In other words, even in applications where it is legitimate for an examiner to initially provide no documentary evidence, if at any point in the prosecution a single non-notorious feature is added, the examiner should conduct an additional search.
The Board of Appeal also disputed the Examining Division's interpretation of which features were technical. In particular, the Board of Appeal noted that the claimed "tracking module" was technical, irrespective of whether this was a hardware or software feature. It stated that this feature was doubly not notorious as it was both reasonably debatable that it would have been known at the priority date, and also could not "legitimately be dismissed as merely generic". The Board of Appeal concluded that the examiner should have conducted an additional search before refusing the application for a lack of inventive step.
The theme of non-hardware features being dismissed as automatically non-technical was further explored in T 1145/10. The application was directed to a method for protecting regions within an electronic document in a word-processing application, again involving a mix of technical and non-technical features. Again the Examining Division refused the application for lack of inventive step based on a piece of "notorious closest prior art", namely "a standard computerized system". While the Board of Appeal agreed that in principle a rejection for lack of inventive step could be made based on such "notorious closest prior art", they found that the Examining Division had made a number of serious errors in their approach in this instance.
The Board of Appeal found that, where an examiner relies on notorious knowledge, the examiner should specify what technical features the purported notorious art embodies. This specification by the examiner should include the 'functionality' of the art and not just the hardware features. Just because a particular technical functionality was "originally motivated by a non-technical requirement", this does not mean that it was non-technical, and accordingly it might involve an inventive step.
From the above cases it is clear that the Boards of Appeal have been moving to improve the application of notorious knowledge. Such judgments should prove invaluable to applicants in guiding examiners towards an appropriate application of notorious knowledge.