- Novelty under the European Patent Convention
-
Legal requirements
applicable to
European patent
applications and patentsEuropean 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] 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.[2] On the other hand, "a specific disclosure does take away the novelty of a generic claim embracing that disclosure".[3][4] For instance, the prior disclosure of the subset "vegetables" takes away the novelty of the wider set "fruits and plants".[2] 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."[3]
Contents
Definition of the state of the art under Article 54(2) and (3) EPC
Since an invention is considered to be new if it does not form part of the state of the art, the legal notion of "state of the art" is critical for assessing whether an invention is new. In general, under Article 54(2) EPC, "[the] state of the art [is] 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."
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.[5]
Legal fiction of Article 54(4) and (5) EPC
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."[6] 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.
Notes
- ^ EPO Board of Appeal Case Law, Special edition 2, Official Journal 2009, p. 18.
- ^ a b Case Law of the Boards of Appeal (Fifth edition 2006), I.C.3.2.6 "Generic disclosure", p. 87.
- ^ a b Guidelines for Examination in the EPO c.iv.9.5 (Generic disclosure and specific examples)
- ^ See also T 651/91 (in German) point 4.3, and for instance 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".
- ^ Article 56(second sentence) EPC
- ^ Decision G 2/08 of the Enlarged Board of Appeal dated 19 February 2010, Reasons 5.10.9.
External links
- Guidelines for Examination in the EPO c.iv.9 : Novelty
- Legal Research Service for the Boards of Appeal, European Patent Office, Case Law of the Boards of Appeal of the EPO (sixth edition 2010), i.c : Novelty
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