The European Patent Office
An introduction to patentability requirements in Europe
Rodolphe Bauer, Frédéric Dedek,
Gareth Jenkins, Cristina Margarido
Patent Examiners, EPO
09/04/2015
October 2013
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.
Reveal
invention
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 be
contrary 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
Novelty
Why do we search & examine for novelty?
An electric light bulb
as has been used
for decades
A patent application
filed yesterday
Would you grant a patent for something which is already known?
What does "new" mean?
Already known
Already known
Patent application
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 ...
... before the
filing date of the
application
written description
oral description
State of
the art
or in any other way
by use
Article 54(2) EPC
Which disclosures can we use?
Filing date 01.09.2010
2006
2007
2008
2009
2010
2011
2012
time
Priority date 01.09.2009
Everything made available
to the public before the
date of filing (priority)
Article 54 EPC
Novelty Test: Feature
Analysis
Novelty Novelty
: featureTest:
analysis
Feature
Novelty Test:
Feature
Analysis
Analysis
1. Personal computer
Claim:
1.
2.
3.
4.
5.
6.
PersonalClaim:
computer
+ a screen
+ a2.
screen
Claim:
+ a keyboard
3.
+ a keyboard
1.
Personal
computer
+ a key
1. 2.
Personal
computer
+
a
screen
4.
+
a
key
+ ...
2. 3.
+ a+ screen
a keyboard
+ ...
3. 5.
+ a++
keyboard
4.
a ...
key
4. 5.
+ a+ key
6. +......
5. 6.
+ ...
+ ...
6. + ...
prior art
prior art
prior art
Novelty test
A device for watering plants having a watercontaining portion (1), a handle (2), an opening
with a lid (3) and a spout (4)*.
B
F
A
C
*A projecting pipe or tube, e.g. as in a teapot.
E
D
up
Implicit features/interpretation of "... for ..."
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"
Intended
Prior art:
"A stainless steel hook for fishing,
in the shape of a half-circle,
pointing upwards when hung up"
Claim:
a stainles
in the sh
pointing
Combination of documents
Can we use a combination of documents to attack novelty?
Novelty: Equivalents (1)
Claim
Prior art
A watering can of aluminium
A watering can of zinc
NEW
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
Generic disclosures vs. specific examples
Claim
A watering can made of metal
Prior art
A watering can made of aluminium
NEW
Generic disclosures vs. specific
examples (2)
Claim
A watering can made of metal
Prior art
A watering can made of aluminium
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
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 Guidelines
G-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
B
F
E
E
A
C
D
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.
B
F
E
E
A
C
D
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 art
without 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 art
without 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
Need more information?
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 Contact us at
www.epo.org/contact
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Thank you for your attention.