Novelty under the European Patent Convention

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Under the European Patent Convention (EPC), European patents shall be granted for inventions which inter alia are new. The central legal provision explaining what this means, i.e. the central legal provision relating to the novelty under the EPC, is Article 54 EPC. Namely, "an invention can be patented only if it is new. An invention is considered to be new if it does not form part of the state of the art. The purpose of Article 54(1) EPC is to prevent the state of the art being patented again." [1]

Contents

Definition of the "state of the art"

Since an invention is considered to be new if it does not form part of the state of the art, the legal concept of "state of the art" is critical for assessing whether an invention is new.

State of the art under Article 54(2) EPC

The state of the art is essentially defined in Article 54(2) EPC. Namely:

The state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application.

The state of the art under the EPC is therefore said to be absolute. Even the disclosure to a single person who is under no obligation to maintain secrecy is sufficient for a disclosure to be considered part of the state of the art. The absolute novelty also means that even the theoretical possibility of having unrestricted access to a certain information is regarded as rendering this information available to the public. [2] In other words, as summarized in decision T 1081/01: [2]

The case law (...) accepts that information is "available to the public" if only a single member of the public is in a position to gain access to it and understand it, and if there is no obligation to maintain secrecy. [3]

The subject-matter in a disclosure can, however, "only be regarded as having been made available to the public, and therefore as comprised in the state of the art (...), if the information given is sufficient to enable the skilled person, at the relevant date (...) and taking into account the common general knowledge in the field at that time, to practise the technical teaching which is the subject of the disclosure (...). [4] In other words, the subject-matter in a disclosure can only destroy novelty "if the teaching it contains is reproducible". [5]

State of the art under Article 54(3) EPC

Furthermore, Article 54(3) EPC extends the content of the state of the art by also including "the content of European patent applications as filed, the dates of filing of which are prior to the date referred to in paragraph 2 and which were published on or after that date". The purpose of this notional extension of the state of the art under the European Patent Convention is to address conflicting prior rights which might otherwise, without Article 54(3) EPC, lead to more than one patent granted for the same invention to different inventors. The extension of the definition of the state of the art under Article 54(3) EPC is limited to the assessment of novelty and does not apply to the assessment of inventive step. [6] In other words, "documents within the meaning of Article 54(3) EPC are not to be considered in deciding on inventive step". [7]

Non-prejudicial disclosures (Article 55 EPC)

Article 55 EPC provides for two specific situations in which a disclosure before the filing of a European patent application might not be regarded as part of the state of the art under Article 54 EPC. The first situation is the case of an evident abuse "in relation to the applicant or his legal predecessor", [8] and the second is the disclosure of an invention "at an official, or officially recognised, international exhibition falling within the terms of the Convention on international exhibitions signed at Paris on 22 November 1928 and last revised on 30 November 1972." [9]

Novelty assessment

Explicit or implicit disclosure

When it comes to assessing novelty, the disclosure of a prior art document is regarded as encompassing not only its explicit disclosure but also "everything that the skilled person would inherently understand when reading the document", [10] i.e. its implicit disclosure. [11] "The implicit disclosure [of a piece of prior art] means no more than the clear and unambiguous consequence of what is explicitly mentioned" in the piece of prior art. [12]

Specific disclosure taking away the novelty of a generic feature

When assessing novelty, a generic disclosure (in the state of the art, i.e. for instance in a prior art document) does not normally take away the novelty of any specific example falling within that disclosure. [13] [14] On the other hand, "a specific disclosure does take away the novelty of a generic claim embracing that disclosure". [15] [16] For instance, the prior disclosure of the subset "vegetables" takes away the novelty of the wider set "fruits and plants". [13] Or, as two other examples,

"a disclosure of copper takes away the novelty of metal as a generic concept, but not the novelty of any metal other than copper, and one of rivets takes away the novelty of fastening means as a generic concept, but not the novelty of any fastening other than rivets." [15]

More generally, any disclosure in the prior art of something falling within the ambit of a claim deprives the claim of novelty.

Legal fiction of Article 54(4) and (5) EPC; special concept of novelty

Besides the general principle that something cannot be patented if it was already known in the state of the art (because not new), there are cases wherein a substance or composition may be notionally considered new (i.e. by virtue of a legal fiction) even when the substance or composition is as such already comprised in the state of the art. Namely, Article 54(4) and (5) EPC "acknowledges the notional novelty of substances or compositions even when they are as such already comprised in the state of the art, provided they are claimed for a new use in a method which Article 53(c) EPC excludes as such from patent protection." [17] Article 53(c) EPC excludes from patentability methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body, but this provision does not apply to products, in particular substances or compositions, for use in any of these methods. Article 54(4) and (5) EPC is complementary to Article 53(c) EPC.

Furthermore, according to the case law of the Boards of Appeal, "the first to show a use of a substance or composition in a medical method should receive broad protection covering any use in a medical method, even if only one specific use is disclosed in the application (see T 128/82, OJ 1984, 164; T 36/83 OJ 1986, 295)". [18]

See also

Related Research Articles

The patentability of software, computer programs and computer-implemented inventions under the European Patent Convention (EPC) is the extent to which subject matter in these fields is patentable under the Convention on the Grant of European Patents of October 5, 1973. The subject also includes the question of whether European patents granted by the European Patent Office (EPO) in these fields are regarded as valid by national courts.

<span class="mw-page-title-main">European Patent Convention</span> International patent treaty

The European Patent Convention (EPC), also known as the Convention on the Grant of European Patents of 5 October 1973, is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to which European patents are granted. The term European patent is used to refer to patents granted under the European Patent Convention. However, a European patent is not a unitary right, but a group of essentially independent nationally enforceable, nationally revocable patents, subject to central revocation or narrowing as a group pursuant to two types of unified, post-grant procedures: a time-limited opposition procedure, which can be initiated by any person except the patent proprietor, and limitation and revocation procedures, which can be initiated by the patent proprietor only.

Prior art is a concept in patent law used to determine the patentability of an invention, in particular whether an invention meets the novelty and the inventive step or non-obviousness criteria for patentability. In most systems of patent law, prior art is generally defined as anything that is made available, or disclosed, to the public that might be relevant to a patent's claim before the effective filing date of a patent application for an invention. However, notable differences exist in how prior art is specifically defined under different national, regional, and international patent systems.

A person having ordinary skill in the art, a person of (ordinary) skill in the art, a person skilled in the art, a skilled addressee or simply a skilled person is a legal fiction found in many patent laws throughout the world. This hypothetical person is considered to have the normal skills and knowledge in a particular technical field, without being a genius. The person mainly serves as a reference for determining, or at least evaluating, whether an invention is non-obvious or not, or involves an inventive step or not. If it would have been obvious for this fictional person to come up with the invention while starting from the prior art, then the particular invention is considered not patentable.

Novelty is a requirement for a patent claim to be patentable. An invention is not new and therefore not patentable if it was known to the public before the filing date of the patent application, or before its date of priority if the applicant claims priority of an earlier patent application. The purpose of the novelty requirement is to prevent prior art from being patented again.

The EPC 2000 or European Patent Convention 2000 is the version of the European Patent Convention (EPC) as revised by the Act Revising the Convention on the Grant of European Patents signed in Munich on November 29, 2000. On June 28, 2001, the Administrative Council of the European Patent Organisation adopted the final new text of the EPC 2000. The EPC 2000 entered into force on December 13, 2007.

The opposition procedure before the European Patent Office (EPO) is a post-grant, contentious, inter partes, administrative procedure intended to allow any European patent to be centrally opposed. European patents granted by the EPO under the European Patent Convention (EPC) may be opposed by any person from the public. This happens often when some prior art was not found during the grant procedure, but was only known by third parties.

In certain jurisdictions' patent law, industrial applicability or industrial application is a patentability requirement according to which a patent can only be granted for an invention which is susceptible of industrial application, i.e. for an invention which can be made or used in some kind of industry. In this context, the concept of "industry" is far-reaching: it includes agriculture, for instance. An example of invention which would not be susceptible of industrial application is "a method of contraception [...] to be applied in the private and personal sphere of a human being".

G 1/03 and G 2/03 are two decisions of the Enlarged Board of Appeal of the European Patent Office (EPO), which were both issued on April 8, 2004.

This is a list of legal terms relating to patents. A patent is not a right to practice or use the invention, but a territorial right to exclude others from commercially exploiting the invention, granted to an inventor or his successor in rights in exchange to a public disclosure of the invention.

<span class="mw-page-title-main">Grant procedure before the European Patent Office</span>

The grant procedure before the European Patent Office (EPO) is an ex parte, administrative procedure, which includes the filing of a European patent application, the examination of formalities, the establishment of a search report, the publication of the application, its substantive examination, and the grant of a patent, or the refusal of the application, in accordance with the legal provisions of the European Patent Convention (EPC). The grant procedure is carried out by the EPO under the supervision of the Administrative Council of the European Patent Organisation. The patents granted in accordance with the EPC are called European patents.

<span class="mw-page-title-main">Internet as a source of prior art</span>

In the context of patent law, using the Internet as a source of prior art when assessing whether an invention is novel and inventive, may be problematic if it is difficult to ascertain precisely when information on websites became available to the public.

Article 84 of the European Patent Convention (EPC) specifies that the "matter" for which patent protection is sought in an application - the purported invention - shall be stated ("defined") in the claims. This legal provision also requires that the claims must be clear and concise, and supported by the description. The function, form and content of the claims are defined by Article 84 supplemented by Rule 43 EPC.

Article 123 of the European Patent Convention (EPC) relates to the amendments under the EPC, i.e. the amendments to a European patent application or patent, and notably the conditions under which they are allowable. In particular, Article 123(2) EPC prohibits adding subject-matter beyond the content of the application as filed, while Article 123(3) EPC prohibits an extension of the scope of protection by amendment after grant.

Article 83 of the European Patent Convention (EPC) relates to the disclosure of the invention under the European Patent Convention. This legal provision prescribes that a European patent application must disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.

Under the European Patent Convention (EPC), European patents shall be granted for inventions which inter alia involve an inventive step. The central legal provision explaining what this means, i.e. the central legal provision relating to the inventive step under the EPC, is Article 56 EPC. That is, an invention, having regard to the state of the art, must not be obvious to a person skilled in the art. The Boards of Appeal of the European Patent Office (EPO) have developed an approach, called the "problem-and-solution approach", to assess whether an invention involves an inventive step.

Under Article 82 EPC, a European patent application must "...relate to one invention only or to a group of inventions so linked as to form a single general inventive concept." This legal provision is the application, within the European Patent Convention, of the requirement of unity of invention, which also applies also in other jurisdictions.

Under the European Patent Convention (EPC), any third party –i.e., essentially any person– may file observations on the patentability of an invention which is the subject of a European patent application or, after grant, subject of a European patent, especially to draw the attention of the European Patent Office (EPO) to some relevant prior art documents. This is a form of public participation in the examination of patent applications.

G 1/83, G 5/83 and G 6/83 are landmark decisions issued on 5 December 1984 by the Enlarged Board of Appeal of the European Patent Office (EPO) on the patentability of second or further medical use of a known substance or composition. They deal with patent claims directed to such second or subsequent medical use, and, as explained in reason 22 of decision G 5/83, the Enlarged Board held that patent claims directed to such substances or compositions were allowable under the European Patent Convention (EPC) when worded as purpose-limited product claims, which are also referred to as "Swiss-type use claims". These decisions are the first decisions issued by the Enlarged Board of Appeal.

References

  1. ↑ EPO Board of Appeal Case Law, Special edition 2, Official Journal 2009, p. 18. See also decision T 12/81 of February 9, 1982, reasons 5: "(...) The purpose of Article 54(1) EPC is to prevent the state of the art being patented again."
  2. 1 2 Paolo Ammendola (23–24 March 2011). Case law of the EPO boards of appeal: a review by internal and external experts, The concept of novelty according to the case law of the boards of appeal of the EPO, Part 1: Definitions. Munich, Germany: European Patent Office. 7:44 to 10:40 minutes in. Retrieved August 11, 2012. (with reference to decisions T 1081/01, T 482/89, and T 381/87).
  3. ↑ Decision T 1081/01 of September 27, 2004, reasons 5.
  4. ↑ Guidelines for Examination in the EPO , section g-iv, 2 : "Enabling disclosure"; Guidelines for Examination in the EPO , section g-vi, 4 : "Enabling disclosure of a prior-art document".
  5. ↑ Legal Research Service for the Boards of Appeal, European Patent Office, Case Law of the Boards of Appeal of the EPO (9th edition, July 2019), i.c.4.11 : "Reproducibility of the content of the disclosure".
  6. ↑ Article 56(second sentence) EPC
  7. ↑ "T 0437/14 () of 17.10.2016". European Patent Office. 24 October 2016. Reasons for the Decision, 7.7. Retrieved 5 November 2016.
  8. ↑ Article 55(1)(a) EPC
  9. ↑ Article 55(1)(b) EPC
  10. ↑ T 1995/15, reasons 1.1.4
  11. ↑ Legal Research Service for the Boards of Appeal, European Patent Office, Case Law of the Boards of Appeal of the EPO (9th edition, July 2019), i.c.4.3 : "Taking implicit features into account".
  12. ↑ Decision T 1523/07 of 24.11.2009, Reasons 2.4.
  13. 1 2 Legal Research Service for the Boards of Appeal, European Patent Office, Case Law of the Boards of Appeal of the EPO (9th edition, July 2019), i.c.5.2.6 : "Generic disclosure".
  14. ↑ "In T 651/91 the board cited with approval the Guidelines, confirming that a generic disclosure did not normally deprive any specific example falling within that disclosure of novelty." in Legal Research Service for the Boards of Appeal, European Patent Office, Case Law of the Boards of Appeal of the EPO (9th edition, July 2019), iii.w.3 : "The boards' application of the Guidelines in specific cases"
  15. 1 2 Guidelines for Examination in the EPO , section g-vi, 5 : "Generic disclosure and specific examples"
  16. ↑ T 651/91 (in German) point 4.3: "In Übereinstimmung mit den Prüfungsrichtlinien (...) ist dazu festzustellen, daß die Offenbarung einer allgemeinen Lehre die Neuheit einer speziellen Ausführung, die unter diese allgemeine Lehre fällt, nicht vorwegnimmt. Allgemein kann eine Lehre selbst dann sein, wenn sie die Auswahl zwischen lediglich zwei Alternativen offenläßt."; T 776/07, point 2.2, third paragraph: "It is established case law that a specific disclosure takes away novelty of a generic feature in a claim but that a generic disclosure does not take away novelty of a specific feature".
  17. ↑ Decision G 2/08 of the Enlarged Board of Appeal dated 19 February 2010, Reasons 5.10.9.
  18. ↑ Legal Research Service for the Boards of Appeal, European Patent Office, Case Law of the Boards of Appeal of the EPO (10th edition, July 2022), i.c.7.1.1 : "First medical use - introduction"
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