Novelty – ie-net basic course

15/10/2020

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Kris Hertoghe & Davy Wauters

© DenK iP

Novelty – ie-net basic course

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CONTENTS

1. Legal basis

2. Invention, subject of claims

3. State of the art

4. Assessing novelty

5. Claim vs. State of the art

6. Effect of priority

7. State of the art under article 54(3) EPC

8. Introduction of exercise

Only content of 1 document

T 153/85: “When assessing novelty, the disclosure of a prior

document must be considered in isolation. It is only the actual

content of a document (as understood by a skilled man) which

destroys novelty.”

Exception: T 153/85: “A prior document may on its proper

construction incorporate all of a second prior document into its

disclosure, by specific reference to the second document.”

+

In practice - How to assess novelty?

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No combination of components within a document

T 305/87: “It is not permissible to combine separate items

belonging to different embodiments described in one and the

same document merely because they are disclosed in that one

document … unless the document suggests such combination.”

T 233/90: “Permissible to use documents of reference such as

handbooks, encyclopaedia or dictionaries in order to determine

what the skilled person would have understood.”

In practice - How to assess novelty?

Other words can be used to indicate the same, but this does not

make an object novel

Narrow concept of novelty: No equivalents of disclosed features

(equivalents can be considered for inventive step)

BUT: meaning of terms can be looked for in handbooks (taking into

account the date! Cfr amplifier (1935) – including transistor?)

Equivalents

≠

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Specific versus general

“A specific feature anticipates a more generic feature”

e.g. “gold” anticipates “metal”

“sulphuric acid” anticipates “acid”

“tie” anticipates “elongate object”

“vegetables” anticipates “fruits and plants” (T 508/91)

T 651/91: A generic disclosure does not normally depriveany specific example falling within that disclosure of novelty

e.g. “hydrocarbons” does not anticipate “CH4”

Implicit and explicit features

Each feature of the claims which appears directly and

unambiguously – hence explicitly - in the publication, can be

used to destroy novelty of the claim. (T 6/80)

Each feature that appears implicitly has to be carefully

studied. The implicit feature must be directly and

unambiguously derivable from the publication. (T 677/91)

e.g. Rubber, of which the elastic characteristic is used but not explicitly

mentioned, deprives novelty of “elastic material”

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T 666/89

Situation:

Available information: process which inevitably results in a

product not so described

To be decided:

Can the product still be patented?

T 518/91

Situation:

Technical facts are explicitly stated in prior art document.

Logical interpretation of these facts by skilled person is in

contradiction with explicit information in prior art doc.

To be decided:

Does the logical interpretation form part of the state of the

art?

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T 624/91

Situation:

Claim: Al alloy with amount in wt% (Li 2.0 to 2.4; Mg 0 to 0.9, …)

D2: Exact disclosures for alloy compositions (Al alloy with nominal

composition of 2,5% Li, 0.15% Mg)

To be decided:

Does this document D2 also disclose compositions which

deviate somewhat from the exact values given?

T 71/93Situation:

Method for testing rubber

D1 does not disclose: Fourier transform calculation

operation is applied to convert data points into values representing the

torque and phase angle

D5: same field; disadvantage in that reciprocal vibration does not have a

sinusoidal waveform; hence one can conclude that one might use

Fourier analysis for obtaining accurate measurement results

To be decided:

Does D1 implicitly disclose Fourier transform?

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Intrinsic features

= features inherently present

T59/87: refers to G2/88: Question to be decided is what has

been made available to the public, not what might have

been inherent in what was made available to the public. Line to

be drawn between what is made available and what remains

hidden. Whether previously undisclosed technical effect which

inevitably occurred is made available depends on the context of

each case.

© DenK iP

Deficiencies and mistakes in disclosures

T 77/87: substantial inconsistency between abstract

published in J. Chem. Abst. and original paper – disclosure

of original paper has to prevail -- EXCEPTION

T 591/90: doc forms part of state of the art even if its

disclosure is deficient – STANDARD

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Deficiencies and mistakes in disclosures

T 412/91: If statement is plainly wrong then, although published,

document does not form state of the art. Unless skilled person cannot

see that statement is wrong.

T 230/01: Doc normally forms part of state of the art, even if its

disclosure is deficient, unless it can unequivocally be proven that the

disclosure is not enabling, or that the literal disclosure of the document

is manifestly erroneous and does not represent the intended technical

reality. Such (non-enabling or erroneous) disclosure does not from part

of the state of the art.

Patent applications as state of the art

Publication of patent applications

- As soon as possible after 18 months after filing (or priority)

- File can be accessed by the public

- As from publication: application = state of the art

- Also the abstract forms state of the art (T 160/92)

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Publication date of patent application

Issues of proof

Nature of evidence:

T 611/97: describing system in a catalogue and selling it

means that different features of the product may be

made available to the public – after sale with

unrestricted access to public technical info not

necessarily described in catalogue could become

available

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Issues of proof

Burden of proof in case of allegation of lack of novelty:

- T 82/90: lies with the party claiming that the information was made

available before relevant date

- T 919/97: evidence of general technical knowledge only to be

submitted if its existence is disputed

- T 743/89: reversal of burden of proof (leaflet printed 7m < prio but

only distributed thereafter)

- Standard: more than “balance of probabilities”

-In case of doubt: advantage to the patentee

But T 381/87: strong chance is sufficient

WHAT? WHEN? WHERE? HOW? TO WHOM?

CONTENTS

1. Legal basis


3. State of the art






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Checking novelty of a claim (Art. 84 EPC) in view of the

state of the art (prior art) :

4. Claims vs. State of the art

Find the

differences !

NOVEL : at least one feature is not present in each disclosure of

the state of the art.

NOT NOVEL : all features of the claim occur in (at least one) a single

disclosure of the state of the art.

Relevant vs non-relevant featuresNon-technical features (R.43(1) EPC) should not be taken into account.

Examples : a green vehicle

a data field with a name field

Limiting vs. non limiting features

“for” means “suitable for” when it is used in

device claims. (GL part F.IV §4.13)

If the feature in the state of the art is suitable for

performing the functionality, the state of the art is

novelty destroying, if not the state of the art does not

destroy novelty. (e.g. hook for fishing vs. hook for a crane, a mold for

molten steel, a ice cube tray)

“for” is limiting when used in method claims.

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technical and non technical features

T154/04

• Novelty can only be established on the basis of the technical

features of the invention.

• Although it is legitimate to have a mix of technical and non-

technical features appearing in a claim, novelty can only be

based on technical features. Non-technical features, to the extent

that they do not interact with the technical subject matter of the

claim for solving a technical problem, do not provide a technical

contribution to the prior art and thus are ignored in assessing

novelty (and inventive step).

Limiting and non-limiting features

1. A chemical compound X

2. A method for the preparation of a chemical compound according to

claim 1, the method comprising ….

3. An apparatus for the preparation according to claim 2, comprising

the following components : …..

4. A (known) composition A+B for the application T

5. A (novel) use of a (known) composition A+B for the protection

against corrosion (2nd non-medical use G2/88+G6/88)

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Exercise : claims vs. State of the art

Invention State of the art

Is the claim novelwith respect to

the state of

the art ?

A device for watering plants, thedevice comprising

- a container (1) for holding water,

- a component for lifting thedevice (2)

- an opening (3) with a closingmeans, and

- a pouring opening (4)


Invention State of the art:

Coca Cola bottle

Is the claim novelwith respect to

the state of

the art ?

A device for watering plants, thedevice comprising

- a container (1) for holding water,

- a component for lifting thedevice (2)

- an opening (3) with a closingmeans, and

- a pouring opening (4)

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Drafting a novelty matrix :

- put the different features of the claims

in the first column

- split alternatives in the claims

Claim : A vehicle with an electric motor or with a steam motor =

Claim : A vehicle with an electric motor +

Claim : A vehicle with a steam motor

- analyse whether each of the features is present in the disclosure of the

state of the art.

- indicate the relevant date for each of the claims (priority)


Novelty matrix

Invention D1 D2

Claim 1

An elongated writing implement comprising

at one end of the implement a first component

capable of marking a surface

and at a distally remote point on the implement

a second component capable of removing any marking

made by the first component.

Claim 2 according to claim 1

wherein the second component is an eraser

Claim 3 according to any of claims 1 or 2

wherein the first component is a graphite tip

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Invention D1 D2

Claim 1

An elongated writing implement comprising

at one end of the implement a first component

capable of marking a surface

and at a distally remote point on the implement

a second component capable of removing any marking made by

the first component.

Claim 2 according to claim 1

wherein the second component is an eraser

Claim 3 according to any of claims 1 or 2

wherein the first component is a graphite tip

D1

Novelty matrix

D2

Amendment of the claim in view of D2 :

An elongated writing implement comprising at one end of the implement a first

component capable of marking a surface and at a distally remote point on the

implement a second component capable of removing any marking made by the

first component, wherein the first component is a graphite tip.

CLAIM 1Claim 3

Invention :

D2 :

Use of the novelty matrix

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Amending claims

Amending claims can be done as follows ( GL H.V.3.2)

- By using a combination of features from dependent claims with

all the features of the independent claim.

Art. 94(3) EPC & R137(2) EPC & R137(3) EPC

- By combining all features of the independent claim with a

feature that was disclosed in the description of the patent

application.

R137(4) EPC – basis in the application as filed

- From drawings

But subject matter should relate to an

invention that was searched

CONTENTS

1. Legal basis


3. State of the art






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Effect of priority

What is priority (see also later session)?

“Any person who has duly filed, in or for any State party to the Paris

Convention for the Protection of Industrial Property or any Member of the

World Trade Organization, an application for a patent, a utility model or a

utility certificate, or his successor in title, shall enjoy, for the purpose of filing a

European patent application in respect of the same invention, a right of

priority during a period of twelve months from the date of filing of the first

application.” (Art. 87 EPC)

Effect of priority:

“The right of priority shall have the effect that the date of priority shall count

as the date of filing of the European patent application for the purposes of art.

54(2) EPC, art. 54(3) EPC and art. 60(2) EPC. ” (Art. 89 EPC)

Effective date:

The effect of claiming priority has the effect that the date of filing for Art. 54(2)

EPC changes to the priority date.

1. Priority application P1 filed 9.05.2019

2. EP1 application filed with claiming priority of P1, whereby the filing of EP1

application was performed on 8.05.2020

3. If priority is validly claimed for claim X, the

relevant date for determining the state of the

art for claim X is 9.05.2019

The effective date of a claim is the filing date of the earliest application (i.e.

either a priority application or the present filing) in which all features of that

claim are disclosed in a same embodiment (see Art. 88(3) EPC).

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Effect of priorityExample 1

Effective date for evaluating the state of the art ?

Relevance of publication 1, 2 and 3 for claim 1 and claim 2 ?

14/06/2019 14/05/2020

X claim 1 : X

claim 2 : Y

P1 EPX

Y

1X

Y

2X

Y

3

Effect of priority

A practical tool : the time line

-Identify the relevant dates for the claims, the priority dates and the filing date

-Identify the relevant publication dates for the possible anticipations

Prio

rity1

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/mm

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Cla

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Cla

ims 4

, 5

Cla

ims 2

,3

Prio

rity2

dd

/mm

/yy

yy

Filin

g

dd

/mm

/yy

yy

Pu

blica

tion

B

dd

/mm

/yy

yy

Pu

blica

tion

A

dd

/mm

/yy

yy

Pu

blica

tion

C

dd

/mm

/yy

yy

Pu

blica

tion

D

dd

/mm

/yy

yy

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CONTENTS

1. Legal basis


3. State of the art






State of the art: Art.54(2) and (3) EPC

Art. 54(2) EPC

State of

the art

Art. 54(3) EPC

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

Additionally, the content of European patent

applications as filed, the dates of filing of which

are prior to the date referred to in Art. 54(2) EPC

and which were published on or after that date,

shall be considered as comprised in the state of

the art.

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Why Art.54(3) EPC?

- 18 months to publication (Art. 93(1) EPC)

- Limiting the occurrence of double patenting

“first to file” principle

Double patenting is limited to applications filed on the same day.

Publication EP1

Publ. Subject matter A

Application EP1

for subject matter A

Application EP2

for subject matter A

18 months from publication

Patent for

subject

matter A only

for EP1

What is state of the art under Art.54(3) EPC?

- description, claims and drawings of the earlier EP application are state

of the art (including disclaimers, content of valid references, explicitly

described prior art)

- the abstract does not form state of the art (art. 85 EPC, R66 EPC)

- a corresponding priority application does not form state of the art

- the translation (art. 14(2) EPC) is not state of the art in as far as it is

wrong or extends beyond the original application (in other words only

the original description is state of the art)

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What is not Art.54(3) EPC state of the art?

Art. 54(3) EPC : “Additionally, 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, shall be considered as comprised in the state of

the art.”

NO : national applications such as BE, DE, PCT(DE), …

(but these are relevant for national invalidation actions under Art. 138(1) EPC and Art. 139(2)

EPC)

YES : EP and PCT(EP)

Conditions :

- PCT(EP) : (art. 153 EPC, R165 EPC)

- payment of filing fees R159(1)(c)

- PCT application translated in EN, DE, FR and published (bulletin)

Art.54(4) EPC 1973Under EPC 1973 :

Art. 54(4) EPC1973 & R23a EPC1973 : “Art. 54(3) shall be applied only in so far as a

Contracting State designated in respect of the later application, was also designated in

respect of the earlier application as published”. So Art. 54(3) prior art is only prior art for

the corresponding designated states.

Under EPC2000 :

Art. 54(3) EPC is applicable for all designated states

Which law is applicable : EPC 1973 or EPC 2000 ?

Determine the effective filing date (not the priority date for this step !) of the European

patent application for which novelty is to be evaluated :

Filing date < 13.12.2007 EPC 1973 is the relevant applicable law

Filing date ≥ 13.12.2007 EPC 2000 is the relevant applicable law

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Art.54(3) EPC & Art.54(4) EPC1973

3.12.2007

GB2

1.9.2008

EP2 (FR, DE, GB, IT)

1.8.2008

EP1 (FR, GB, BE, NL)

5.12.2007

GB1

Is EP2 state of the art under Art. 54(3) EPC ?

If so : for which contracting states ?

Application under study: EP1

Possible prior art :

Art.54(3) EPC & Art.54(4) EPC1973

Effect on the analysis:

- On the timescale :

- indicate the filing date of EP / PCT(EP) applications that are state of the

art under Art. 54(3) EPC

- Depending on the filing date of the application under study :

- EP application under study filed < 13/12/2007 : Art 54(3) prior art is only applicable

for corresponding designated states.

- EP application under study filed ≥ 13/12/2007 : Art 54(3) prior art is applicable for all

EPC states

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Art.54(3) EPC & Art.54(4) EPC1973

Amending the claims for obtaining novelty :

- the possibilities indicated above

- Use of a disclaimer : G1/03, G2/03

- Filing date < 13.12.2007 : separate set of claims for commonly

designated states or withdrawal of the commonly designated

states.

Caution!

Art. 54(3) EPC state of the art is

ONLY relevant for NOVELTY

Art. 54(3) EPC state of the art

can NOT be used for INVENTIVE STEP

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CONTENTS

1. Legal basis


3. State of the art





8. Introduction of excercise

Exercise : introduction

Goal :

The goal of the exercise is to evaluate novelty of all claims of a document (D1) with respect to possible state of the art.

You should deliver the following: - A timeline- A novelty matrix - An argumentation for anticipation or novelty to be drafted for each claim and if required, for eachalternative possibility of the claims of D1.

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Exercise : introduction

Available information

- Instructions- Letter of client- D1 : document for which the claims are to be evaluatedwith respect to novelty

- Di other prior art disclosures- List of translated words

Formulate your conclusions on novelty and refer to the relevant “articles/rules of the EPC”

Contact : [email protected] www.denkip.com

Questions ?

Please do not hesitate to contact us

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Documents

Novelty – ie-net basic course