To be patentable, an invention must be new (A52 CBE).
Chapter 1. Definition of novelty
An invention is new if it is not disclosed by the state of the art (A54 (1) EPC).
For the definition of the state of the art, please refer to The definition of the prior art opposable.
Chapter 2. Proof of Disclosure
Regarding proof of disclosure, please refer to the page Evidence of disclosure.
Chapter 3. Using Disclosures to Attack Novelty
Section 3.1. Principle: no combination
Indeed, if we could combine all disclosures in a single document (ie whatever the embodiment), it would be easy to take a large catalog and draw the desired technical lessons a little randomly (T305 / 87, shears).
Section 3.2. exceptions
A combination is also possible if:
- this combination was expressly suggested (T305 / 87) (and that these were available on the filing date, G-VI Guidelines 8 and T153 / 85);
- this combination could have been seriously considered by the person skilled in the art (T666 / 89), for example if this is unambiguously suggested.
The content that can be combined will then be the content to which reference is made: no more.
Of course, it is possible to use technical dictionaries or reference works (even after the request) to interpret the claims (G-VI Guidelines 1).
Chapter 4. Assessment of novelty according to the wording of the claims to be attacked
Section 4.1. Invention and range of values
An invention of selection consists in selecting (G-VI Guidelines 8), in a known set or a known range:
- individual elements,
- sub-ranges of limited values that have not been explicitly mentioned.
This selection should not be the result mandatory sufficiently described in the prior art (T12 / 81).
4.1.2. Selection in an individualized list
A selection is not new if, for the selection in a list ofindividualized elements, the selection is made only in a unique listing (G-VI Guidelines 8 i, ex. selecting the rubber from a list including a spring, rubber, etc.).
Nevertheless, if the selection of elements is carried out in two (or more) lists to form a combination of features (G-VI Guidelines 8 i, selection of rubber in a list comprising a spring, rubber, etc., and iron in a list comprising copper, iron, etc.).
4.1.3. Selection of a sub-range in a disclosed range
1) Historical approach
- the selected sub-range is narrow par rapport à la plage de valeurs connue ;
- the selected sub-range is sufficient remote any specific example disclosed in the state of the art and extreme points of the known range of values (T17 / 85).
It may happen that the document of the prior art proposes a composition of products for which each product is in a given range and that the claimed invention proposes the same list of products in sub-ranges. To estimate if the sub-ranges are narrow, it is necessary:
- to compare individually each sub-range with respect to the corresponding range, if the content of the different products are not related;
- to globally compare the sub-ranges with respect to the ranges disclosed, if the content of the different products are related (T324 / 13).
2) Une sélection arbitraire ou sans effet technique ?
Pendant longtemps, l’OEB a considéré qu’il fallait en plus que la sélection ne soit pas arbitraire et soit réalisée avec un but particulier (i.e. en gros que la sélection ait un effet technique)
4.1.4. Selection of a sub-range intersecting a disclosed range
- there is a new technical education;
- the disclosed values (limits or intermediate values disclosed) are excluded by disclaimer,
- a person skilled in the art would not have seriously considered working in the overlap zone because the state of the art contained a reasoned statement clearly discouraging him from selecting the said range of values, even though it was disclosed (ex. . "it is possible to work in the range, [0-100 ° C] but low temperatures give poor results” T26 / 85).
4.1.5. Selecting a range containing a value disclosed
Like the previous paragraph, it is necessary to exclude the value disclosed so that the claim is new.
4.1.6. Focus on the value of the terminals and values disclosed
When a numerical value is given (individually or in a list), it must be understood as a value range covering the margin of error measurement (G-VI Guidelines 8.1).
If no margin is indicated, look at the value range for rounding (eg [3.45cm, 3.54cm] for an indication of 3.5cm, G-VI Guidelines 8.1).
Section 4.2. Invention of use
A new use of a known product is considered new for patent law (ie "Use of product X for ...") even if this new use does not require technical realization.
We are talking about a new use and not a new technical effect: thus, if a new technical effect is discovered, but simply "explains" a known use (eg a deodorant effect) the claim will not be new (T892 / 94).
Section 4.3. disclaimers
4.3.1. Disclaimer disclosed
It is possible to predict from the deposit a negative characteristic (HV Directives 3.5) if :
- there is no clearer and concise way to protect the claimed subject, or
- a positive characteristic would unduly limit the scope of the claim.
4.3.2. Undisclosed Disclaimer
Under certain conditions, it may be possible to specifically modify its claims in order to regain novelty. This modification consists of a negative wording inserted in the claims to exclude a prior art (HV Directives 4.1).
The disclaimer is accepted one of the following conditions is met (G1 / 03):
- the disclaimer aims to restore novelty by excluding a prior art A54 (3) EPC ;
- the disclaimer aims to restore novelty by excluding a prior art A54 (2) EPC knowing that this anteriority is fortuitous (eg totally different technical problem);
- the disclaimer is intended to exclude an embodiment excluded from patentability by A52 CBE at A57 EPC for non-technical reasons (eg human cloning).
The disclaimer must also comply with the following conditions (G1 / 03):
- the disclaimer must be as limited as possible to achieve the desired purpose or risk being contrary toA123 (2) EPC (knowing that later the pincer A123 (2) EPC – A123 (3) EPC apply to, T747 / 00) unless this is required to avoid a lack of clarity (T10 / 01);
- the disclaimer must not allow escape from a document under the inventive step;
- the disclaimer must not allow to escape a pincer A123 (2) EPC – A123 (3) EPC (T1180 / 05);
- the disclaimer must not allow the exclusion of an embodiment that does not work;
- the disclaimer must not make it possible to overcome a lack of description;
- the disclaimer must be clear and concise (T286 / 06).
2) Disclaimer by a positive characteristic?
As we said before, a disclaimer must be a negative feature: it must take away something from the claim.
Thus, it is not possible to add a disclaimer with a positive characteristic (T2502 / 13). For example, if prior art specifies that a material is not plastic, it is not possible to indicate that this material is plastic to distinguish itself from the prior art.
It sounds obvious, but it's better by saying it 🙂
Section 4.4. Category of claim
4.4.1. Therapeutic applications
1) First therapeutic application
What does this cover
The first therapeutic application is planned atA54 (4) EPC.
This article provides that it is possible to claim a non-novel product for use as a medicine: the claim will then be new (if of course the use of this product as a medicine was not known).
The claim will then be formulated as follows:
Product X for use as a medicine, in which ...
What it does not cover
However, this exception is limited to "substances or compositions": a simple therapeutic device (eg a scalpel, an MRI, etc.) will not benefit from this exception (T2369 / 10).
2) Second therapeutic application
What does this cover
The second therapeutic application is planned atA54 (5) EPC.
- a particular disease;
- an illness that is usually treated with this product, but in a new way (G2 / 08different dosage).
The claim will then be new (if of course the use of this product to cure this disease was not known).
The claim will then be formulated as follows (G-VI Guidelines 7.1):
Product X for use in the treatment of disease Y, in which ...
Note: Swiss type claims (ie "Use of a substance or composition X for obtaining a medicament for therapeutic use Z" or "Method for producing a medicament for therapeutic use Z, characterized in that substance X is used") Are no longer allowed for applications with a filing date or a priority date earlier than January 29, 2011 (G2 / 08).
What it does not cover
Par ailleurs, l’utilisation d’une substance “non-active” (ex. un polymère permettant de donner une structure à une paroi du corps humain) n’est pas possible dans le cadre de l’A54 (5) EPC (T2136 / 15).
There is not much to say here: all the characteristics of the process must be reproduced.
4.4.3. Process for + destination
The formulation "to recast galvanic layers"Should not be understood to mean that the process is only suitable for redesigning the galvanic layers, but as a functional characteristic which relates to the redesign of the galvanic layers and which therefore defines one of the steps of the claimed process (T848 / 93, Directives F-IV 4.13).
4.4.4. Process for + manufacturing / obtaining a product
Contrary to what is mentioned for "processes for + destination", The process which leads to the obtaining of a product must be interpreted in the sense that it must be simply adapted to that use (T304 / 08).
It is worth noting the decision T268 / 13 going in the opposite direction: according to her, only the manufacturing processes that lead to such a product can be destructive of novelty.
4.4.5. Process for + effect
4.4.6. Process for manufacturing a new and inventive product
Where the product claim is patentable, it is not useful to look at the novelty and inventiveness of a process claim that inevitably leads to the manufacture of that product (T119 / 82, Guidelines F-IV 3.8 and G-VII Guidelines 13).
There is not much to say here: all product features must be reproduced.
Normally, a product claim confers absolute protection (in any context, G2 / 88)
4.4.8. Product defined by a process ("product by process")
The formulation of these claims is "Product obtainable by Method Y" or equivalent (formulation to be preferred over the formulation "Product obtained by Method Y", T728 / 98).
Therefore, such a claim may well be anticipated by a product manufactured by another method (as long as there is no intrinsic characteristic of the manufacturing process that is found in the product): the burden of proof possible difference, however, rests with the applicant (T205 / 83).
This type of claim should only be used if it is impossible to define the product otherwise.
4.4.9. Product for + destination
Normally, a product claim confers absolute protection (in any context, G2 / 88).
Thus, a "product for + destination" claim should be considered equivalent to the "product" claim (G-VI Guidelines 7): a substance X which is intended to be used as a catalyst will not be considered new in relation to the same substance known as dye.
On the other hand, if the destination of the object "hides" certain technical characteristics, it will be different: for example, "Device for mixing molten metal" supposes that this device supports the heats.
In any event, in order to analyze this type of claim, it is necessary to transform the expressions "device for + destination"By" device suitable to + destination” (Directives F-IV 4.13).
The use claims must be considered as process claims (Directives F-IV 4.16).
4.4.11. Using a new and inventive product
4.4.12. Use of a method for + destination
Section 4.5. Non-technical features
In the case of an invention combining technical and non-technical characteristics, it can not be concluded that the claimed object is not an invention because only the non-technical features make a contribution to the state of the art (T154 / 04).
A characteristic has a non-technical character, particularly if the effect of this characteristic is subjective (T1259 / 08). Personally, I find this approach strange (at least for the analysis of the novelty) because a given characteristic could be coated of a technical character or not according to the formulation of its technical effect (eg the zoom on an image allows a nice graphic effect, the zoom on an image makes it possible to better distinguish the details, etc.).
Section 4.6. Examples
Expressions such as "preferably", "for example", "such as", etc. are not limiting and are ignored (Directives F-IV 4.9).
Section 4.7. Explanation of a technical effect
A new explanation of a technical effect does not confer novelty (T892 / 94).