The European Patent Office An introduction to patentability requirements in Europe

1
The European Patent OfficeAn introduction to
patentability requirements in Europe
Rodolphe Bauer, Frédéric Dedek, Gareth Jenkins,
Cristina Margarido Patent Examiners, EPO
October 2013
2
The requirements for patentability

• Exclusions
• Exceptions
• Novelty
• Inventive Step
• Industrial applicability

3
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.

Get exclusivity
Reveal invention
4
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

5
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
6
Article 53 Exceptions to patentability 

• European patents shall not be granted in respect
  of
• 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
• 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
• 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.

7
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
8
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?
9
What does "new" mean?
Already known
Already known
Patent application
10
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
11
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
State of the art
oral description
by use
or in any other way
Article 54(2) EPC
12
Which disclosures can we use?
Filing date 01.09.2010
2010
2011
2012
2009
2008
2007
2006
time
Priority date 01.09.2009
Everything made available to the public before
the date of filing (priority)
Article 54 EPC
13

• Novelty feature analysis
• 1. Personal computer
• 2. a screen
• 3. a keyboard
• 4. a key
• 5. ...
• 6. ...

14

• Novelty test
• A 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.

B
F
E
A
C
D
15

• 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"
16

• Combination of documents
• Can we use a combination of documents to attack
  novelty?

17

• Novelty Equivalents (1)

A watering can of aluminium
Claim
A watering can of zinc
Prior art
NEW
18

• 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

19
Generic disclosures vs. specific examples
A watering can made of metal
Claim
A watering can made of aluminium
Prior art
NEW
20

• 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
Claim
A watering can made of aluminium
Prior art
21
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
22
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
23
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.

24
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.

25
The problem/solution approach

• 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
26
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 ?

27
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

28
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.

29
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!

30
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."

31
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

32
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.
33
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
34
Need more information?

• Visit www.epo.org
• Contact us at www.epo.org/contact
• Follow us on

Thank you for your attention.