For the novelty
The state of the art is:
- the general knowledge of the person skilled in the art, any public disclosure (written or oral), any public use before the filing date of the patent application (A54 (2) EPC);
- the European patent applications filed before the filing date, and published afterA54 (3) EPC).
Definition of "filing date"
Determination of the opposable state of the art
Here is the explanation of this somewhat complex diagram:
- Determine the effective date of the patentable application and disclose the state of the art:
- this date is determined claim by claim (for the application whose patentability is in question);
- it is the filing date (or priority date if applicable) of the application.
- Determine whether the date of publication of the prior art document predates (strictly) the effective date of the patentable application.
- if this is verified, then the document of the prior art is a document A54 (2) EPC ;
- If the disclosure is not an application filed before and published after, then it is not a document of the state of the art;
- If the disclosure is not a European or Euro-PCT application, then it is not a prior art document (but it may be a prior national law A139 (2) EPC or A139 (2) CBE73);
- If the disclosure is a European application (respectively Euro-PCT and validating points 7 to 9 below), then one has to ask whether the application whose patentability is in question was filed in Europe (respectively internationally) before 13 December 2007 (ie the entry into force of the EPC 2000): otherwise the document is a document A54 (3) EPC.
- If the application whose patentability is in question was filed before 13 December 2007 (and validating points 7 to 9 below), then it is necessary to check that the conditions laid down by the CBE73 are met with respect to the request for the prior art:
- The opposability of the application of the prior art is analyzed country by country: to be opposable in a country, it is necessary that this application of the prior art has validly designated this country (A54 (4) CBE73).
- If the request of the prior art is a simple EP request:
- It is necessary that the designation fees of theA79 (2) CBE73 have been validly paid (R23bis CBE73). These taxes must be paid within 6 months from the mention of the publication of the European search report (A79 (2) CBE73).
- If this deadline is missed, a notification is sent and then runs a deadline of 1 month to make this payment with surcharge (R85bis CBE73).
- If the request of the prior art is a Euro-PCT application (A158 (1) CBE73 and A158 (2) CBE73):
- It is necessary to pay the national tax of R106 CBE73, ie the filing fee and the designation fees;
- The designation fees may in any case be paid within a 31 months (R107 (1) CBE73) or within 6 months from the mention of the publication of the international search report (the longer of the two deadlines).
- If the disclosure is a Euro-PCT application, it should be considered whether it was pending (ie still in international phase) on 13 December 2007 (ie the entry into force of the EPC 2000);
- If this request was still pending on 13 December 2007, the EPC 2000 is applicable and it must be considered whether this request is worth a regular European application (A153 (2) EPC) under CBE2000 conditions (A153 (3) EPC, A153 (4) EPC, and R165 EPC):
- If this request was no longer pending on 13 December 2007, the EPC 1973 is applicable and it must be considered whether the conditions of entry into phase CBE73 have been met (A158 (1) CBE73 and A158 (2) CBE73), ie under 31 months :
- It is necessary to produce a translation of the PCT application if it is not in one of the official languages of the EPO;
- It is necessary to pay the national tax of R106 CBE73, that is to say :
- the filing fee and
- designation fees;
Special case of requests A54 (3) EPC
As we have indicated, European patent applications filed before the filing date, and published afterA54 (3) EPC) are part of the state of the art.
To check whether the European patent application has been filed before, the priority date must be taken into account (if this priority is valid, G-IV Guidelines 5.1.1).
Publication and withdrawal
So if the request is withdrawn before its publication, then the request is not enforceable (J5 / 81).
If ever the application is published after the request was withdrawn (either by mistake or because the request was withdrawn after the end of the technical preparations, A93 CBE) then it is not opposable (G-IV Guidelines 5.1.1).
Priority and withdrawal of priority after publication
It can thus happen things quite "surprising" as shown in the following diagram:
Thus, neither of the two EP1 and EP2 applications is new: they mutilate each other under theA54 (3) EPC.
Application pending as of December 13, 2007
In this case, it is possible to have several sets of claims in order to avoid anteriority (R87 CBE73).
It is even possible to have several sets of descriptions and / or drawings if the Examiner considers it necessary (Directives H-III 4.1).
If the disclosure is a Euro-PCT application, it is necessary that the designation fees have been paid for that application (R23bis CBE73).
Withdrawal from a validly designated country is irrelevant (G-IV Guidelines 5.1.1).
For inventive step
The state of the art to be considered for the assessment of inventive step is the same as that of novelty (public written or oral disclosures, public uses, etc. before the filing date of the patent application), but excluding documents A54 (3) EPC, that is to say European patent applications filed before the filing date, and published afterA56 CBE together A54 (2) EPC).
Therefore, the state of the art opposable is the set of documents accessible to the public before the filing date (or priority date) of the application concerned (A54 (2) EPC).
Should the state of the art be technically relevant?
The state of the art must be interpreted as relating to the information:
- in close technical fields of the invention (T28 / 87) and
- which are relevant to a technological field (T172 / 03 and Guidelines G-VII 2).
Thus, if the person skilled in the art does not expect to find technically relevant information, it should be excluded.
Nevertheless, this approach is rejected by the decision T2101 / 12 : in this decision, the Board of Appeal finds no justification in the EPC to limit the state of the art for inventive step.
Therefore, the state of the art may very well be a commercial activity or, more generally, a non-technical activity (T2101 / 12).
Dates to consider
Concerning the date of the documents of the state of the art, this one is the disclosure date (A54 (2) EPC).
Consideration of the context
Public availability of a disclosure
General knowledge of the skilled person
The general knowledge of the person skilled in the art, at the filing date, are of course considered to be accessible to the public.
This knowledge can be proven by any means (dictionary, encyclopedia, basic technical manual, scientific articles).
- this literature contains contextual elements identified as being representative of the general knowledge of those skilled in the art;
- if the technical field considered is innovative and that this general knowledge had not yet found their places in textbooks or monographs but that because of the innovative side this knowledge spread rapidly in the scientific community considered (T1117 / 14).
The EPO indicates that an Examiner may not cite a document if he considers that a feature is of common knowledge (" Notice from the European Patent Office dated 1 October 2007 concerning methods in the field of economic activities », OG 2007, 592).
Fortunately, you can challenge it (T766 / 91 or Guidelines G-VII 3.1): if a person tells you that this characteristic is part of the general knowledge of the person skilled in the art or that the characteristic is obvious, you can ask him to demonstrate it (I confess I have not had much success in front of the room d 'Review but good ...).
It should be noted, however, thatT1090 / 02) which states that it is up to the plaintiff to prove that the alleged general knowledge is after the priority date (I wish you good luck in providing such proof).
Written disclosure is considered to be made available (G-IV Guidelines 1 and G-IV Guidelines 7.2.1) if, on the date in question, members of the public could take cognizance of it (except clauses of confidentiality or clauses restricting the use or the diffusion).
Thus, it is irrelevant whether a person has actually consulted the document (T381 / 87).
Number of people constituting the public
Other case law considers that a disclosure is destructive of novelty since " the man in the street "Knows about it (T482 / 89).
Special case of a thesis
If a thesis is defended, it only enters the state of the art if the public could attend the thesis or if the jury members were not bound by a confidentiality undertaking (T1817 / 08).
A thesis is in any case considered to be accessible from the moment this thesis has a serial number and can be ordered (T1266 / 11): whether this thesis was actually ordered is irrelevant.
Special case of a letter
A mail is considered to be a prior art from the date of its receipt by the addressee and not the mailing (T381 / 87).
Special case of an Internet document
These Internet quotes can be very good (T286 / 10):
- pages extracted from a classic website;
- pages cached in the tool " archive.org (Because this tool " provides sufficient guarantees to benefit from a presumption of reliable and trustworthy information").
Examples of disclosure / non-disclosure
A document is considered accessible to the public, not to the reception by the librarian, but to the day when the librarian places the document on the shelves of his library (or gives him a reference, T729 / 91 or T176 / 02). However, the Board of Appeal decided in T834 / 09 that the librarian was part of the public, and that therefore the date of reception by the librarian was the date on which the document was considered to be accessible to the public…
Internal documents of a company are not a priori not public (T37 / 96).
Sending an unencrypted e-mail document does not make this e-mail available to the public, because there are confidentiality commitments with the access providers (Q2 / 09).
End-of-internship or thesis dissertations, made to obtain a degree, are most often considered accessible to the public, especially if references to these dissertations are made in subsequent works (T151 / 99).
In principle, the Examiner should not cite oral disclosure if he does not have a written evidence proving this disclosure (Directives B-VI 2).
- the date of prior use / oral description,
- the purpose of the use / oral description (ie the same or similar),
- the circumstances of the use / oral description (ie accessibility to the public).
Indeed, it is possible that certain uses constitute disclosures under certain conditions. These uses can be (G-IV Guidelines 7.1):
- for a product:
- its manufacture,
- his offer,
- its circulation (sale or exchange),
- its use ;
- for a process:
- his offer,
- its application.
In the context of use in a non-public place, it is considered that there is no disclosure (Guidelines G-IV 7.2.3).
The composition of a product is part of the state of the art as soon as this product is accessible to the public and can be analyzed and reproduced by those skilled in the art. It is irrelevant whether the skilled person had reason to analyze the composition / constitution of the product (G1 / 92).
It is therefore necessary that the product could be analyzed:
- a simple presentation at a fair may be insufficient, if the public can not access the product or manipulate it freely (G-IV Guidelines 7.2.1);
- a very brief presentation of the product to the public (eg a few seconds to more than 5m) may be insufficient if it appears that these characteristics could not be clearly and directly distinguished in this short period of time (T1410 / 14).
Some case law requires that the analysis does not require excessive difficulty to discover the composition / constitution of a product (G1 / 92, reason 1.4).
However, other jurisprudences consider that the degree of difficulty, the amount of work, or the time requiring the analysis is inoperative (T952 / 92).
Knowing perfectly the composition of a product does not always reproduce the latter.
Indeed, the process and the manufacturing conditions can have a notable impact on the ability of those skilled in the art to reproduce the invention (eg in the field of polymers, T1833 / 14).
The extrinsic characteristics are:
- the manufacturing characteristics of the product,
- the specific effect of the composition of a product on the human body (eg 2nd therapeutic effect),
- effects that occur only when there is interaction between the product and specifically chosen external conditions (T1409 / 16).
Public and confidentiality
If a confidentiality clause expires, that is not enough to make the disclosure public. It must be considered whether the third party, who was previously subject to the confidentiality clause, actually disclosed the information in question (T1081 / 01).
If anyone in the public can access the document (T50 / 02), even if this person would have to pay and be subject to a distribution restriction (eg paid standard such as MPEG or DVD, T2239 / 15), then this document will be considered accessible to the public (contra T1155 / 12).
If the opponent claims that there was no confidentiality agreement, it is up to him to prove it (T37 / 96).
In case of obvious abuse
TheA55 (1) (a) EPC provides that disclosures made during a period of 6 months before the filing of the application are not taken into account if it results' obvious abuse of the plaintiff or his predecessor in law".
- a real intention to harm; or
- knowledge (full or presumed) of the damage that will / may be caused.
For example, the erroneous publication of a patent application before the planned date does not necessarily constitute an abuse (T585 / 92).
There is an abuse if the person disclosing the invention has violated (intentionally or mistakenly) a confidentiality agreement (T173 / 83).
In the event of recognized official exhibitions
TheA55 (1) (b) EPC provides that disclosures made during a period of 6 months prior to the filing of the application is not taken into account if it results from a recognized official exhibition (see the website of the international exhibitions office).
Be careful, not all exhibitions (and, in fact, they are quite rare): it is necessary to look precisely the list of international exhibitions recognized on the site of the International Exhibition Office.
They are also published in the OJ (in April, in the section "international treaties"):
- 2017 (OG 2013, 252):
- June 10 to September 10, 2017: Energy of the future: response to the major challenge of Humanity (ASTANA, KZ)
- 2015 (OCT 2012, 342):
- May 01 to October 31, 2015: Feeding the planet, energy for life (MILAN, IT)
- 2012 (OCT 2012, 342):
- 05 April to 21 October 2012: Floriade 2012 - Living Nature (World Horticultural Exhibition) (VENLO, NL)
- May 12 to August 12, 2012: For Oceans and Living Coastal Areas: Diversity of Resources and Sustainable Activities (YEOSU, KR)
- 2010 (OJ 2006, 326):
- May 01 to October 31, 2010: Best City - Best Life (SHANGAI, CN)
- 2008 (OJ 2006, 326):
- 14th of June, 13th of September 2008: Water and Sustainable Development (ZARAGOZA, ES)
- 2006-2007 (OJ 2006, 326):
- November 01, 2006 to January 31, 2007: Royal Flora Ratchaphruek 2006/2007 (CHIANG MAI, TH)
- 2005 (OJ 2003, 161):
- March 25 to September 25, 2005: The Wisdom of Nature (AICHI, JP)
- 2003 (OJ 2003, 161):
- April 25 to October 12, 2003: IGA 2003 - Horticultural Exhibition (ROSTOCK, DE)
In order for the disclosure made at the conference to be unenforceable, it is necessary:
- the deposit to make an exhibition statement (A55 (2) EPCthis can not be corrected later);
- in a delay of 4 months from the time of deposit (R25 EPC) (or when entering the regional phase for Euro-PCT applications, R159 (1) (h) EPC) provide a certificate that must
- to be delivered during the expo;
- note that the invention is actually exposed;
- mention the date of opening of the exhibition and possibly the date of first disclosure of the invention;
- accompanied by the authenticated documents (by the person who made the certificate) to identify the invention.
The last deadline of 4 months enjoys theA121 EPC.
Content of disclosures
Of course, the explicit content of disclosures (eg description) is in the state of the art.
The document of the prior art must be considered as a whole, including its drawings.
Nevertheless, the dimensions of the figures should not be taken into account (T204 / 83) unless the dimensions are presented in the description as being of particular importance (ie importance that would have caused the draftsman to represent these dimensions in a realistic way, T1488 / 10).
The same goes for dimensional relationships. Except in special cases, the drawings are not very helpful (T1943 / 15).
Where a combination of features is found only in the claims, it must be carefully considered whether that combination truly corresponds to the technical teaching of the document as understood by those skilled in the art, or whether it is simply an artifact of the claims drafting process, intended to obtain the widest protection (T312 / 94, T969 / 92, T42 / 92, T1658 / 12).
The EPO considers that disclosures made in the abstract of a patent or application should not be taken into account if such disclosure is inconsistent with that of the description (T1080 / 99).
Sufficient / defective disclosure
For a disclosure to be able to destroy the novelty of a claim, it is necessary that the information provided to a person skilled in the art be sufficient to enable him, at the date of publication (or filing for a document A54 (3) EPC), to put technical education into practice (T206 / 83, T26 / 85 and G-VI Guidelines 4).
A fortuitous disclosure is a relevant disclosure whereas, however, the technical problem is quite different (T161 / 82).
In any case, this type of disclosure is well enforceable, but a disclaimer is possible.
References to other documents
If the relevant content of a document incorporated by reference (ie quoted) is not clearly identified in the disclosure, it will not be taken into account for the analysis of the novelty (T689 / 90, G-IV Guidelines 8).
- if the reference was publicly available at the filing date, it is taken into account.
- if the reference was not available to the public on the filing date, it is taken into account only if:
- as of the filing date of this application, the reference was available to the Office;
- at the date of publication of this application, the reference is publicly available.
"The particular anticipates the general"
In a general way (G-VI Guidelines 5), a general disclosure (eg of metal) does not anticipate a specific characteristic (eg copper).
Conversely, a specific disclosure (eg a rivet) anticipates a general characteristic (eg a fastening system).
It may happen that certain characteristics of one of the claims are not found in the same disclosure: for all that the invention is necessarily new?
Not necessarily !
If a characteristic is implicit in a disclosure, then it is part of the state of the art (G-VI Guidelines 6).
A characteristic is "implicit" if it follows " directly and unequivocally Of it (that is, if there were no other choice than the existence of this characteristic).
As an illustration, during a disclosure of a shoe, there is no implied disclosure of laces, because other fasteners are possible (like scratches).
Nevertheless, it is not a matter of assessing the probability that a person skilled in the art has paid attention to this implicit characteristic and therefore knows it, but to know in a purely objective way whether the prior art discloses it (eg a report between several values above a threshold, T1456 / 14).
Features simply juxtaposed
It may also happen that these undisclosed features do not technically collaborate with the disclosed characteristics. We then speak of juxtaposition of characteristics.
In Europe, this juxtaposition will bring novelty to demand (T1918 / 09).
Personally, I disagree enough with this position, because I find that this can cause a bias: to escape a possible document A54 (3) EPCit would be enough to add an unlikely, but totally trivial characteristic (ex. and in which the world has a bolt").
This feature is unlikely to be disclosed (unless it is implicit).
French case law agrees with this view: in the latter situation, each "group" of independent characteristics must be analyzed separately (Cass. c. com. November 29, 1967).
Interpretation of characteristics
A document subsequent to the relevant date may be taken into account (T1110 / 03) especially if it is a dictionary or a reference work.
The general knowledge of the person skilled in the art can be taken into account (T206 / 83) : most often this knowledge can be proven by technical manuals.
In exceptional cases (highly specialized technical fields), it may happen that one accepts that the general knowledge of the person skilled in the art is proved by the patent specifications (Guidelines F-II 4.1, T51 / 87, T772 / 89).
Here we have a relatively complex concept to grasp.
Imagine that a document of the prior art discloses a feature that is not immediately apparent but must be "revealed" by means of a demonstration, mathematical for example, is it a disclosure?
For the Board of Appeal, the answer is yes, even though no objective reason for such a demonstration is present (T2517 / 11).