The December issue 4|2019 of the journal epi Information contains four interesting contributions to the discussion on the novelty test for sub-ranges as used by the EPO.
The EPO has a special novelty test to determine whether a claimed numerical sub-range of a known broad range is novel over the known range. A sub-range must comply with each of the three criteria of the test. The criteria are, that the sub-range (i) must be narrow compared to the broad range, (ii) be far removed from known examples within the broad range, and (iii) is not an arbitrary specimen of the prior art but another invention (purposive selection, new technical teaching).
The test was formulated in 1985 by the technical board of appeal in decision T198/84 and subsequently used broadly within the EPO. Recently, several articles have criticized the test. In 2013 Thomas Leber of the EPO regarded compliance of the three criteria with the EPC questionable (see JIPLP, vol. 8, issue 7, July 2013, pages 561-565). More recently, I argued that the three criteria are incompatible with recent EPO case law on novelty (epi Information, issue 4|2019, page 27-33).
The latest edition of the Guidelines for Examination in the EPO, which entered into force on 1 November 2019, has removed the purposive selection criterion from the test (see section G-VI, 8(ii)). However, the latest edition of the book Case Law of the Boards of Appeal of the European Patent Office, 9th edition, published July 2019, still mentions the three criteria of the test (see chapter I.C.6.3.1). In addition, the book mentions a large body of contradictory case law about the purposive selection. Roel van Woudenberg argues in his recent article, that the purposive selection criterion should be kept in the test, as being consistent with the disclosure test used for novelty (see epi Information, issue 4|2019, page 34-39).
On 17 October 2019 the President of the epi, Francis Leyder, sent a letter to the President of the EPO with a request to refer the question which criteria are to be used in assessing the novelty of a sub-range to the Enlarged Board of Appeal, in particular referring to the uncertainty about the applicability of the purposive selection criterion (see epi Information, issue 4|2019, page 9-12).
On 25 November 2019 Heli Pihlajamaa responded on behalf of the President of the EPO (see epi Information, issue 4|2019, page 13-14). According to the EPO, the development of case law on selection inventions shows that all technical boards that usually deal with this type of invention have adopted the two-criteria test for novelty of sub-ranges, thereby omitting the purposive selection criterion. A development of case law including a period in which decisions go in different directions is a normal part of the application and development of the law, and does not require a review by the Enlarged Board of Appeal. The EPO has adapted the Guidelines for Examination to provide clarity on how to assess novelty of such inventions.
The purposive selection criterion will no longer be used by the examining and opposition divisions, because they follow the Guidelines. It will neither be used anymore by all technical boards that usually deal with selection inventions. However, it is possible that another technical board may still use the purposive selection criterion.
The removal of the purposive selection criterion will cause an increase in the number of sub-ranges that are regarded novel. The subsequent assessment of inventive step will apply criteria such as the presence of a new technical effect in the sub-range, probably resulting in a similar number of grants as when using the three criteria for novelty of sub-ranges.
However, if the closest prior art is a European prior right under Article 54(3) EPC, there is no assessment of inventive step and the larger number of novel subranges may form a problem, in particular in the field of chemistry.
The above course of events shows that only because the President of the epi had written a letter to the EPO, did users of the EPC learn about the development of the case law and the adoption of the two-part test by most boards of appeal. If the President of the epi had not submitted his request, the users of the EPC would still be unaware of the development of the case law and, as a consequence, would still be uncertain about what test for novelty of a sub-range to use in appeal cases.
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D. Visser (and btw R. van Woudenberg) seems to forget that the “white” book on the jurisprudence of the BA is not published by the BA themselves, but by a department attached to the BA, but independent in its choice of decisions cited. It is therefore normal, not to say correct, that the White Paper mentions the recent decision, but also the old decisions which made selection a criterion of novelty.
It is also worth remembering that the “white” book is neither constraining for the divisions of first instance nor for the BA themselves. The examiners are however bound by the Guidelines. If they want to divert from them they need to justify their divergence. I doubt that with the present production pressure, they will indulge in such a game. They will thus apply the new Guidelines without batting an eyelid, as they will not have to think whether the selection is arbitrary or not.
There is no doubt that there is a new line of case law, and certainly not a mere evolution of case law. As such the new line of case of the Board is understandable, but it means that the problem is transferred in the presence of prior art under Art 54(3). Up to then the criterion of “purposive selection” applied in those cases, and helped out weed out some applications or at least curtail them to a good extent. This was in my opinion the reason for not amending the Guidelines up to now.
It is to be feared that in the absence of prior art according to Art 54(2) and in the presence only of prior art according to Art 54(3) a large number of patents will now be granted on the basis of novelty which can be qualified as formally correct, but nevertheless specious. In any event, this development must be avoided, and in the particular case of selection within a range of values, the solution may not have been optimal, but it represented a reasonable compromise.
Even in case of prior art under Art 54(2), if the question of purposive selection is transferred to inventive step, what was considered at least novel under the “old” case law, will become inventive at the outset. Is this the net result the users want? Applicants yes, but what about third parties?
However one should not forget that for an office, more patents granted = more annual fees. From a strictly managerial point of view it is therefore understandable that the Guidelines have been adapted in this sense. But are we then not pushing the patent system to absurdity? Or simply sending the monkey to national courts?
It might sound very Machiavellian, but when seeing the management of the EPO trying to demonstrate that the EPO is on the verge of bankruptcy, and this for very specious reasons, this explanation is not really unreasonable.
In any case, there has been a change in case law and it would be a good idea to refer the matter to the EBA.
It is truly deplorable and not worthy of the EPO not to refer such an important question to the EBA!
The President is certainly not shy with respect to referrals under Article 112(2) EPC in general. The President does not want to deal with the selection problem, which is very real, but is trying to twist the arm of the EBA so that it amends its case law on the interpretation of Art 53(b). By doing so he follows the path of its predecessor and disregards the separation of powers. Poor EPO! It does no deserve its present “managers”.
Techrights: FINGERS OFF!!!!