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World Patent Information, Vol. 15, No. 2, pp. 81-84, 1993. Printed in Great Britain.

Novelty - Current Trends in the Jurisprudence of the Boards of Appeal of the European Patent Office

Mark Weaver, * Nikolaos Perakis and Joseph Riolo, Examiners, Directorate- General Examination/Opposition of the European Patent OfJice, Munich, Germany

Summary

This article examines the development of the concept of novelty through the Decisions of the Boards of Appeal of the European Patent Office (EPO), with particular emphasis on so-called overlap and selection inventions in the field of chemistry. While it is clear that the evolution of the concept of novelty is an ongoing process, the Decisions of the EPO Boards of Appeal, particularly some recent cases, have clearly indicated the current trends and have also given some signs as to the direction this evolution is likely to take in the future.

Introduction

According to Article 54, paragraph 1 of the European Patent Convention (EPC), an invention shall be considered to be new if it does not form part of the state of the art. In Article 54, paragraph 2 of the EPC, the state of the art is held to be 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. These definitions are developed and explained further in the Guidelines for Examination in the European Patent Office, Chapter IV, Section 5.

For further consideration of the concept of novelty, it is convenient to divide the topic into three main areas:

(1) strict or absolute novelty, where the claimed subject-matter is unambiguously distinguished from that of the available prior art;

(2) novelty where there is a technical effect associated with the claimed subject-matter and this effect is decisive of novelty;

*To whom reprint requests should be addressed.

(3) novelty where the claimed subject-matter is a selection from or overlaps with what is known from the available prior art, where there may or may not be a technical effect associated with the selection or overlap, but where any such effect is not decisive of novelty.

The first case, strict or absolute novelty, does not, by its nature, usually present problems of interpretation and will not be considered further. The second case concerns so-called second medical use and second non-medical use type inventions and will also not be covered in this article.

As regards the third group, i.e. selection and overlap inventions, there has been considerable evolution in the jurisprudence of the Boards of Appeal as to what constitutes subject-matter which has been made available to the public within the meaning of Article 54 of the EPC. This article aims to provide an overview of this evolution.

When considering selection and overlap, it is convenient to consider the relevant Decisions of the Boards of Appeal in terms of (i) those relating to chemical compounds, and (ii) those relating to ranges of values. Division into selection and overlap would be artificial, as the principles developed are similar for both compounds and ranges.

Novelty of Chemical Compounds

There are again two convenient subdivisions into (a) novelty of a compound, and (b) novelty of a generic formula.

(a) With respect to individual compounds, an evolution can be seen in the four most relevant Decisions: T 12/U, T 181/82, T 7/86 and T 296/87.

In T 12/81, the Board did not acknowledge the novelty of a product resulting from the reaction of a single compound with one of a class of 20 compounds (starting materials) in one of

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five possible methods. The method had been specifically disclosed and the product in question was the inevitable result of the combination of the said compounds and method. The Board clearly indicated that although the disclosure of a prior art document must be interpreted strictly, it cannot be limited only to what is explicitly disclosed. It was nevertheless emphasized that the situation would be reversed if the final product were a result of a choice from two different classes of compounds (starting materials).

In T 181/82, the interpretation of the extent of a prior art disclosure was developed further. Disclosed were products resulting from reaction of one member of a group of starting materials with one member of a group of reagents, the application in question claiming one possible product. However, as the definition of the group of reagents in the prior art document covered seven compounds, none of which was specifically defined, this was considered as a generic disclosure. It therefore appears that the Board considered that a patentable selection exists in such cases; as the selected compound had previously been defined in a purely conceptual form only, novelty could be acknowledged.

In T 7/86, The Board of Appeal, with reference to the obiter dictum of T 12/81 applied the principle that a choice from each of two variable parameters is novel. This was considered to follow logically from the conclusion in T 181182 that the selection of a single substituent of a generically (conceptually) defined group is sufficient to confer novelty on a composition resulting from this selection.

In T 7/86, the Board of Appeal, with reference to the obiter dictum of T 12/81, applied the principle particular enantiomer is not destroyed by the prior disclosure of the racemate, the two configurations not being disclosed individually but rather in a general or conceptual form. The enantiomer in question was considered novel as it was not the inevitable result of a previously disclosed process (cf. T12/81).

(b) The three most relevant Decisions concerning the novelty of a generic chemical formula are T l/80, T 81185 and T 12190.

In T l/80, the Board set out the basic principles for a selection invention, i.e. that a more precisely defined generic formula is novel over a more broadly defined generic formula of the prior art, where the latter gives no indication of the more precisely defined generic formula which is selected from the broader.

In T 81/85, this concept was developed further with respect to a claimed generic formula which partially overlapped with previously disclosed formulae, the two prior art documents containing concrete

examples falling within the scope of the overlapping zone. The Board of Appeal overturned the decision of the Examining Division, finding that only those products expressly described or resulting from a sufficiently-disclosed procedure were novelty destroying. Disclaiming the specific examples was thus sufficient to confer novelty.

In T 12/90, another Board of Appeal was of a different opinion based on a similar problem of overlapping generic formulae. In this case, it was considered that the information provided in the prior art document disclosed a group of compounds encompassing the two representative novelty-destroying examples and that a simple disclaimer of these two examples was insufficient. It was therefore necessary to disclaim the whole of the area covered by this larger group of compounds, although disclosed in neither the prior art document nor the refused application. Any generic formula remaining could only then be acknowledged as novel, if it contributed a “new element” to the technical teaching of the prior art.

Both of these points have been confirmed in Decision T 116190, which relates to a selection and not to an overlap invention. Novelty was not, however, in dispute in the Appeal Proceedings to which this latter Decision relates.

Two further Decisions, T 11/89 and T 365/89, also indicated that a selected area requires a new technical element to distinguish it from the known area before novelty may be acknowledged.

Decisions T 640/88 and T 278/91 also confirmed that the nature and extent of the information actually imparted to the skilled person by a prior art document as distinct from its literal disclosure must be considered when determining novelty: the former in that it was found necessary to disclaim the teaching of a prior art document in order to establish novelty of a selected range of compounds and the latter by denying novelty where the prior art related to an identical technical teaching. Again in T 278/91, as in Decision T 116/90, novelty was not one of the grounds of Appeal.

Novelty of Ranges of Values

When considering the novelty of a range of values, the Boards of Appeal set out the ground rules to be applied in two Decisions.

In T 198/84, it was concluded that a given range does not necessarily disclose all values lying within it and is not novelty-destroying with respect to a selected sub-range, if this selected range is narrow and far removed from those values in the known range which are specifically exemplified. The most

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important concept to arise from this Decision was that of “purposive selection”, i.e. the effect associated with the selected range confirms that no arbitrary choice has been made, although the effect itself cannot confer novelty.

In T 188/83, it was held that the prior art document disclosed sufficient examples falling within the claimed range such that the range was not novel. The examples were seen as a specific embodiment of a broader teaching, to be considered in conjunction therewith and in the light of general knowledge in the art. An indication as to how the limits of a given range of values should be interpreted was given in Decision T 124/87. A range disclosed as “from about 0.1 up to 100 or over” was taken to clearly include values up to 110 and therefore to be destructive of the novelty of the value 104.

The problem of range limits was also addressed in Decision T 17/85. The prior art document disclosed an overlapping range of a parameter together with specific values thereof, the latter located both within and outside the claimed range. These specific values were so close to the limits of the overlapping range that the skilled person was given a direct pointer to the claimed range. The Decision does, therefore, confirm a movement towards interpretation of a prior art disclosure for the purpose of novelty examination.

The concept of interpretation of a disclosure was also applied in T 26/85, where the Board of Appeal stated a general opinion that if the skilled person would seriously contemplate applying the technical teaching of a prior art document in a range of overlap claimed, then this range would not be novel. However, in the case in question, there was a reasoned statement dissuading the skilled person from applying a technical teaching in a certain part of the range; this part of the range was thus novel.

The principle of “seriously contemplating” applying a technical teaching also arose in T 666/89, where the absence of any rules, which would lead the skilled person not to follow a particular teaching in a range of overlap, meant that the teaching could be interpreted as encompassing this range.

Further confirmation of this principle came from Decision T 255/91, where the concept of “seriously contemplating” was applied to a novelty test to determine whether or not a priority document was a first disclosure.

Conclusions

The Decisions relating to generic chemical formulae, as with all Decisions of the Boards of Appeal, concern individual cases. It is therefore difficult to

draw a general conclusion from their findings; how the skilled person derives a general teaching from a disclosure of a number of individual compounds will vary from case to case.

In the accepted jurisprudence of the Boards of Appeal, represented by Decision T 4180, originally disclosed subject-matter, clearly definable in terms of technical features, may be excluded from a claim of wider scope by means of a “disclaimer”, if the subject-matter remaining cannot technically be defined directly (i.e. positively) more clearly and concisely.

Thus, once the extent of the teaching of the prior art document has been established, a disclaimer may be used to distinguish the claimed subject-matter from the teaching of the prior art. Any such disclaimer must, however, correspond to this derived teaching. This will almost inevitably lead to a disclaimer which is of wider scope than the explicit disclosure of the prior art, which may then present problems of a practical nature, as it may be difficult to modify the scope of the original claim without the risk of infringing Article 123(2) EPC. That this can be done, however, is demonstrated in Decision T 640188.

Whether there remains an invention to be protected after inclusion of an appropriate disclaimer must also be decided on a case to case basis. It has been established (see for example T 666/89) that a technical effect is not a prerequisite for nor can it confer novelty, except in particular cases such as “second medical use” inventions. However, in cases such as T 12/90, the presence of a “new technical element”, also referred to in T 11/89 and T 365/89, may be decisive in the assessment of the novelty of the remaining “non-disclaimed” subject-matter.

The Decisions relating to parameter ranges appear conceptually sound and represent a logical develop- ment from the ground rules of T 198/84 through the wider interpretation of a prior art disclosure (T 188/83) to the concept of seriously contemplating applying the technical teaching of the prior art (T 26185 and T 666/89). Although the findings in T 124/87 may seem somewhat extreme, they do not obscure the general trend clearly discernable in these Decisions.

It is clear that for selection and overlap inventions concerning both chemical formulae and overlapping ranges, there is a trend in Board of Appeal Decisions which leads from a strict definition of the disclosure of a document, the so-called “photographic novelty” (as exemplified by T 12/81, T 181/82 and T 81/85) through “purposive selection” (as exemplified by T 198/84), towards interpretation of the technical teaching by the skilled person, in terms of what is implicitly disclosed in the prior art (T 12/90) or whether he would “seriously contemplate” applying

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the technical teaching in a particular range (T 26/85 and T 666189).

The conclusions of T 12/90, which relate to overlapping generic formulae, have been confirmed in T 640/88, T 116/90 and T 278/91, which concern selection of one generic formulae from within the scope of another. Furthermore, the practice advocated in T 26/85 and T 666/89 has also been applied to a novelty test for determining priority rights (T 255/91) and has been confirmed in both T 366/90 (selection from an open-ended numerical range) and T 278/91. The conclusions in these Decisions thus seem to be intended for general application.

On the basis of the above findings and in the light of their confirmation in T 116/90 and T 278/91 where novelty was not at issue, it must be concluded that the Chemical Technical Boards of Appeal (supported by an Electricity Technical Board of Appeal in T 26/85) intend to give a clear signal that an interpretation of the technical teaching of a disclosure must be made when considering novelty. It must furthermore be considered whether the skilled person would seriously contemplate applying this teaching, regardless of whether the claimed invention relates to overlap or selection, or to chemical formulae or ranges of values. This may at first appear to introduce concepts which have previously been confined to the examination of inventive step. However, in Decision T 666/89, the

Board of Appeal attempted to differentiate between the two, by stating that there exists a technical gap to be bridged when considering inventive step, whereas with novelty there is none. It will be of interest to see how these concepts develop further in the future.

References T l/80, OJ EPO 1981, 206. T 4/80. OJ EPO 1982, 149. T 12/81, OJ EPO 1982, 296. T 181/82. OJ EPO 1984. 402. T 188/83; OJ EPO 1984; 555. T 198/84, OJ EPO 1985, 209. T 17/85, OJ EPO 1986, 406. T 26/85, OJ EPO 1990, 22. T 81/85, “Isocholine derivatives” (unpublished) T 7/86, OJ EPO 1988, 381. T 124/87, OJ EPO 1989, 491. T 296/87, OJ EPO 1990, 195. T 640/88, “Polyolefins stabilised with bis- or tris-(polyalkyl- piperidinylamino)1,3,5-triazines” (unpublished). T 11189. “1 ,h-naphthvridinone derivatives and methods for their production” (unpublished). T 365189. “Silver halide colour photographic light-sensitive material” (unpublished).

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T 666/89, Headnote published in OJ EPO 1992. T 12190, “E-isomers of N-alpha-(2-cyano-2-alkoximinoacetyl)- amino acid derivatives and -peptides (unpublished) T 116/90, “Xanthine derivatives” (unpublished). T 366190, “Interesterification with a lipase enzyme as an interesterification catalyst” (unpublished). T 255/91, Headnote published in OJ EPO 1992. T 278/91, “Ferroelectric chiral smectic liquid crystal composition and light switching element” (unpublished).

This article represents the views and opinions of the authors and is in no way binding on the European Patent Office