19/04/23

The European Patent OfficeAn introduction to patentability requirements in Europe

October 2013Rodolphe Bauer, Frédéric Dedek, Gareth Jenkins, Cristina MargaridoPatent Examiners, EPO

The requirements for patentability

Exclusions Exceptions

Novelty

Inventive Step

Industrial applicability

What is a patent?

A patent is a legal title granting its holder the exclusive right to prevent third parties from exploiting an invention (making, using, offering for sale, selling or importing infringing products) without authorisation in a defined country and for a limited period, e.g. 20 years.

In return for this protection, the holder has to disclose the invention to the public.

Revealinvention

Get exclusivity

Patent requirements

An application contains

– Bibliographic information Inventor, proprietor, date of filing, technology class, etc.

– Description Summary of prior art (i.e. the known existing technology) The problem that the invention is supposed to solve An explanation and at least one way of carrying out the

invention

– Claims Define the extent of patent protection

– Drawings Illustrate the claims and description

– Abstract Around 150 words as a search aid for other patent

applications

Article 52 Patentable inventions

 (1) European patents shall be granted for any inventions, in all fields of technology, ...

(2) The following in particular shall not be regarded as inventions within the meaning of paragraph 1:

– (a) discoveries, scientific theories and mathematical methods; – (b) aesthetic creations; – (c) schemes, rules and methods for performing mental acts, playing

games or doing business, and programs for computers; – (d) presentations of information. 

(3) Paragraph 2 shall exclude the patentability of the subject-matter or activities referred to therein only to the extent to which a European patent application or European patent relates to such subject‑matter or activities as such.

Article 52 EPC

Article 53 Exceptions to patentability 

European patents shall not be granted in respect of:

a) Inventions the commercial exploitation of which would becontrary to “ordre public” or morality; such exploitation shall not be deemed to be so contrary merely because it is prohibited by law or regulation in some or all of the Contracting States;

b) Plant or animal varieties or essentially biological processes for the production of plants or animals; this provision shall not apply to microbiological processes or the products thereof;

c) Methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practiced on the human or animal body; this provision shall not apply to products, in particular substances or compositions, for use in any of these methods.

The requirements for patentability

Exclusions Exceptions

Novelty

Inventive Step

Industrial applicability

Art. 52(1) European patents shall be granted for any inventions, in all fields of technology, provided that they are

new, involve an inventive step and are susceptible of industrial application

Would you grant a patent for something which is already known?

Novelty

An electric light bulbas has been used for decades

A patent applicationfiled yesterday

Why do we search & examine for novelty?

Already known

Patent application

Already known

What does "new" mean?

Novelty

"(1) An invention shall be considered to be new if it does not form part of the state of the art."(2) 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. (3) ....(4) ....(5) ....

Article 54 EPC

What is the "state of the art"?

Everything made available to the public by means of ...

oral description by use

or in any other way

... before the filing date of the application

Article 54(2) EPC

State of the art

written description

time

2010 2011 20122009200820072006

Filing date 01.09.2010

Everything made available to the public before the date of filing (priority)

Which disclosures can we use?

Article 54 EPC

Priority date 01.09.2009

Novelty : feature analysis

1. Personal computer2. + a screen3. + a keyboard4. + a key5. + ...6. + ...

Novelty testA device for watering plants having a water-containing portion (1), a handle (2), an opening with a lid (3) and a spout (4)*.

*A projecting pipe or tube, e.g. as in a teapot.

A

B

C D

F E

Implicit features/interpretation of "... for ..."

Prior art:"A stainless steel hook for fishing,in the shape of a half-circle,pointing upwards when hung up"

Claim: "A half-circle-shaped hook for a crane,

made of stainless steel, the edge of the

hook pointing upwards when the hook is hung up"

Combination of documents

Can we use a combination of documents to attack novelty?

A watering can of aluminium

A watering can of zinc

Claim

Prior art

NEW

Novelty: Equivalents (1)

Novelty: Equivalents (2)

A watering can made of zinc (prior art)

is NOT IDENTICAL to

a watering can made of aluminium (claim)

THE SUBJECT-MATTER OF THE CLAIM IS NEW

A watering can made of metal

A watering can made of aluminium

Claim

Prior art

NEW

Generic disclosures vs. specific examples

Generic disclosures vs. specific examples (2)

Does the prior art disclose "a watering can made of metal"?

Yes!

Why? Because aluminium is a metal.

THE SUBJECT-MATTER OF THE CLAIM IS NOT NEW

A watering can made of metal

A watering can made of aluminium

Claim

Prior art

The requirements for patentability

Exclusions Exceptions

Novelty

Inventive Step

Industrial applicability

Art. 52(1) European patents shall be granted for any inventions, in all fields of technology, provided that they are

new, involve an inventive step and are susceptible of industrial application

Inventive step

"An invention shall be considered as involving an

inventive step if, having regard to the state of the art, it is

not obvious to a person skilled in the art."

Article 56 EPC

The person skilled in the art

is a skilled practitioner in the relevant field

has access to everything in the state of the art

is possessed of average knowledge and ability

is aware of what is common general knowledge in a particular technical field at the

relevant date

has a normal capacity for routine work, but no inventive skills

is involved in constant development in his field

is expected to look for suggestions in neighbouring and general technical fields

or even remote technical fields

may in some fields be a team rather than an individual person

has the same level of skill for assessing inventive step and sufficiency of disclosure

If the problem prompts the skilled person to seek its solution

in another technical field, the specialist in that other field is the

person qualified to solve the problem.

How do we decide on obviousness?

Various tests in different national systems

One of the tests used by the German Patent Office

is that every invention is a solution to a problem.

In the very first case heard by the EPO boards of

appeal, the problem/solution approach was used

to decide on the question of inventive step.

The problem/solution approach

1. Determine the closest prior art This is the item of prior art disclosing the technical effects, purpose or intended use most similar to the invention. It often has the greatest number of features in common with the invention.

2. Based on this, establish the objective technical problem to be solved. How to modify or adapt the closest prior art to achieve

the technical effects of the invention

3. Consider whether the claimed invention, starting from the closest prior art and the

objective technical problem, would have been obvious to a skilled person. Is there an indication in a document of the prior art that would prompt the skilled person to

solve the (objective) technical problem by modifying or adapting the closest prior art to arrive

at the claimed invention?

EPO GuidelinesG-VII, 5

The problem/solution approach ̶ five questions

1.What is the closest prior art ?

2.What is the difference, in terms of the claimed technical features,

between the claimed invention and the closest prior art ?

3.What technical effect is caused by this difference ?

4. What, therefore, is the objective technical problem underlying the

claimed invention?

5.Would the skilled person solve this problem in the manner indicated

on the basis of the totality of the prior art, without at any stage

employing any inventive skill ?

Question 1: What is the closest prior art? (1/3)

The closest prior art is normally the structurally closest prior art,

provided that it: belongs to the same or closely related technical field has a similar purpose or effect as the invention constitutes the most promising starting point for an obvious

development leading to the invention corresponds to similar use and requires the minimum of structural and

functional modifications

A

B

C D

E

F E

Question 2: What is the difference, in terms of the claimed technical features, between the invention and the closest prior art?

Identify all those features which render the claimed subject-matter of the

claim novel in view of the closest prior art only.

A

B

C D

E

F E

Question 3: What technical effect is caused by this difference?

Review the difference between the claimed invention and the closest

prior art.

Determine which technical effect the invention achieves due to these

differences.

There may be no technical effect over the prior art!

Question 4: What, therefore, is the objective technical problem underlying the claimed invention?

Subjective problem vs. objective problem

Don't include elements of the claimed solution in the

objective problem

If the closest prior art does not provide all the effects of

the invention that relate to the distinguishing technical

features, then the problem is "how to modify or adapt the

closest prior art to achieve the technical effects which

the invention provides over the closest prior art."

Question 5: Would the skilled person solve this problem on the basis of the totality of the prior artwithout employing any inventive skill?

"would" vs. "could"

combination of two prior art documents normally used

Question 5: Would the skilled person solve this problem on the basis of the totality of the prior artwithout employing any inventive skill?

IF the prior art (including the closest) does not provide an

indication that would prompt the skilled person to solve the

problem in the way that the inventor solves it

THEN the invention is not obvious

vs.

The requirements for patentability

Exclusions Exceptions

Novelty

Inventive Step

Industrial applicability

Art. 52(1) European patents shall be granted for any inventions, in all fields of technology, provided that they are

new, involve an inventive step and are susceptible of industrial application

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Thank you for your attention.