Do we need a referral to the Enlarged Board of Appeal on the novelty of selection inventions?

Attentive readers will be aware that today is the first day of the CRISPR Board of Appeal hearing at the EPO on the issue of priority. For readers unlucky enough not to be in attendance (and who also do not want to spend the day glued to twitter), IPKat will be providing a handy summary of any significant developments. To keep readers entertained in the meantime, IPKat considers another controversial aspect of EPO case law, selection inventions. 

As even only occasional readers of IPKat will be aware, last year saw a flurry of referrals to the Enlarged Board of Appeal (EBA) (see: The Year of the Pepper: 2019 Enlarged Board of Appeal Year in Review). Over on DeltaPatents, there was also a report on "the EBA referral that never happened". The issue in question was selection inventions. Selection inventions are those directed to a sub-division of the known art. Examples of selection inventions include a sub-range of a known range, or the use of a known therapeutic to treat a sub-category of disease.  Roel van Woudenberg of DeltaPatents reported that, despite what some see as the ongoing lack of clarity regarding how the novelty of selection inventions should be assessed, the President of the EPO refused a request from the European Patent Institute (EPI) (the Institute of Professional Representatives before the EPO) to refer this issue to the EBA.

Legal Background: Selection inventions

European patent law considers a selection from the prior art as being novel if: a) the end points of a claimed sub-range or any point falling within the claimed sub-range are not disclosed in the prior art and b) the end-points of the claimed range are "sufficiently removed" from the individual elements disclosed in the prior art. For many years, the EPO Guidelines for Examination (the “guidelines”) stated an additional requirement that the selection must also be non-arbitrary or “purposive” (T 0198/84). Similarly, the guidelines state that a range overlapping with a range disclosed in prior art is only novel if the overlapping range would not be “seriously contemplated” by a skilled person. The “purposive selection” and "seriously contemplated" criteria may be particularly influential in cases of novelty-only prior art on the basis of which an inventive step attack cannot be raised. 

However, the “purposive selection” criteria for novelty has recently lost favour with some (but apparently not all) of the Boards of Appeal. In T 1233/05, for example, the Board of Appeal was of the opinion that the purposive selection requirement was more akin to an assessment of inventive step as opposed to novelty. The 2019 EPO guidelines were subsequently updated to remove the “purposive selection” criteria (G-VI-8, and G-VII-12) (IPKat: 2019 updates to the EPO Guidelines for Examination - the highlights). However, notably, the criteria that an overlapping range should not be “seriously contemplated” has not been similarly updated (G-VI-9 iii). As pointed out in a recent article by Roel van Woudenberg, this apparently puts the guidelines for assessing the novelty of sub-ranges at odds with the guidelines for assessing the novelty of overlapping sub-ranges. 

Interestingly, the UK courts have also previous expressed dissatisfaction with the EPO’s approach to the novelty of sub-ranges with regards to the purposive selection criteria. On the other hand, UK judges do seem willing to apply the criteria that a novel overlapping sub-range must not be “seriously contemplated” (IPKat: Court of Appeal grapples with novelty of overlapping ranges in Jushi v OCV).

EPI requests a referral from the EPO President

According to the European Patent Institute (EPI), the law on the novelty of selection inventions is  unclear, given the diverging opinions of the Boards of Appeal. In view of this purported lack of clarity, the EPI president (Francis Leyder) wrote a letter to the President of the EPO requesting the President to refer the issue to the EBA. The President of EPI cited a number of recent Boards of Appeal decisions that did not apply the “purposive selection" criteria (including T 1233/05, T 1131/06, T 230/07, T 1130/09, T 2041/09, T 378/12 and T 1404/14) and a two recent decisions that did (T 66/12 and T 673/12). In the view of EPI “[i]t is clear from the above that there are clearly two incompatible lines of Board of Appeal decision as to what are the criteria to be used in deciding whether a sub-range is novel”. The President of EPI therefore suggested a referral from the EPO President to the EBA, that might ask the following question:

“What are the criteria to be used in assessing the novelty of a claim where the allegedly distinguishing feature of the claim relative to a prior art document is a sub-range of a broader range disclosed in that prior art document”.

The response of the EPO president

EPO Director and lawyer Heli Pihlajamaa responded to EPI on behalf of the EPO President. The EPO President agreed that the decisions of the Boards of Appeal “currently go in two directions”. However, in the EPO President’s view, there is a “clear trend towards abandoning the assessment of the third criterion as part of the novelty assessment”. The EPO President views this trend as a development as opposed to a contradiction in the case law. The EPO President also believed clarity has now been provided by the update to the guidelines.

However, the guidelines do not have the same legal force as boards of appeal case law. The guidelines (as the name suggest) are guidelines for first instance departments. Furthermore, Boards of Appeal decisions are only part of the picture. It is this Kat’s understanding that there are diverging approaches within the Examining and Opposition Divisions on this issue. Does this chime with readers’ experiences?

Slicing up the prior art
Despite the EPO President’s refusal to contemplate a referral in the case of selection inventions, he cannot be accused of being shy with respect to referrals under Article 112(2) EPC in general. Last year, following pressure from the Administrative Council, the EPO President controversially referred the question of whether plant products produced by natural processes should be patentable. The opinion of the majority of practitioners is that the President’s referral is clearly inadmissible, and resulted more from the political pressure than legal necessity (IPKat: Pepper gets spicy: The EPO President's Referral to the EBA).

It seems that proponents of a referral with respect to selection inventions can now only hope for a referral by a Board of Appeal (Article 112(1) EPC). Indeed, EPI urges parties in appeal proceedings who find themselves involved in a case where the use or not of the “purposive selection” criteria is influential to the case, to request the Board to refer the issue to the EBA. The opposing view is that a referral is not necessary, as the Boards of Appeal do seem to be following the approach now set out by the guidelines. Indeed, Roel van Woudenberg could be said to be pushing the issue merely because he disagrees with the removal of the purposive selection criteria (as argued his article cited by EPI).

Selection inventions have always been a hotly debated issue. In another article cited by EPI, authored by Derk Visser, it is argued that all three criteria listed in the guidelines are inconsistent with recent case law on novelty. As with second medical use inventions (another form of selection invention), critics are keen that an inventor should not “get something for nothing” by salami slicing (or as some-would have it, “sashimi slicing”) the prior art. The boarder question surrounding the EPI recent request for a referral on sub-ranges is whether the EPO is currently striking the right balance on selection inventions. What do readers think?
Do we need a referral to the Enlarged Board of Appeal on the novelty of selection inventions? Do we need a referral to the Enlarged Board of Appeal on the novelty of selection inventions? Reviewed by Rose Hughes on Monday, January 13, 2020 Rating: 5


  1. Who benefits from the crime?Monday 13 January 2020 at 11:26:00 GMT

    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 law of the Boards 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.

    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!

    I fully approve the comments about the President not being 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!

    Techrights: FINGERS OFF!!!

  2. Robin Jacob has been known to advise audiences that "We can learn a lot from the Americans. Watch carefully what they do. And then make sure not to make the same mistake that they did."

    Observing what the Supreme Court of the USA does to patent law, one might think that, over here, a reference to the EBA can sometimes be premature.

    As here, I think. The case law of the EPO emerges like Darwinian evolution. I mean, survival of the "fittest" line of legal logic. Is that not how the best EBA case law has emerged, over the last 40 years? It will do so here, I would think.

    Sometimes patience is called for. Given time, things will all work out for the best. Meanwhile, our advocacy skills will decide which of the rival lines will prevail. For me, the "seriously contemplate" test can be reconciled with the Gold Standard, and makes a lot of sense.

  3. I would like to agree with Max Drei, but for the same token as "purposive selection" should now belong to inventive step, why bring then the notion of "seriously contemplate" as this can as well be considered as belonging more to inventive step than novelty.

    I always thought that early certainty was something to thrive for, and certainly for the top management of the EPO....

    Now we have two lines of case law, which are clearly diverging.

    I am therefore advocating a referral to the EBA.

  4. Well that's indeed the thing, isn't it, Attentive. Consider the skilled person, interested in the "disclosure" of a document, wanting to milk it for everything derivable from it. The Gold Standard limits the "disclosure" to that which is "derivable" directly and unambiguously, from the document. But the imaginary addressee has at its disposal, to assist in the task of deriving stuff, all the common general knowledge that can be imputed to the hypothetical skilled person. Under those conditions, what the skilled person is deemed to seriously contemplate during the contemplation of the document can be seen as within the ambit of that which the skilled person derives, directly and unambiguously, from the document.

    Or, to put it another way, when one deems the skilled person to be the possessor of an enormous reservoir of common general knowledge, one necessarily imputes to that imaginary being subject matter that it cannot help but "contemplate" seriously and inevitably, when performing the task of deriving disclosure from the document.

    Or, to put it another way, is not the "implicit" disclosure and what the reader will "seriously contemplate" two ways of expressing much the same thought?

    After all, we here in Europe do need a pragmatic solution to the "Art 54(3) art" problem which balances the need for fair protection, as between the earlier and the later Applicant, with reasonable legal certainty for the public. The AIA solution in the USA, in making all 54(3) art available for obviousness attacks, fails that test by giving too much power to the first filer. Rendering nugatory any 54(3) attacks on later filings awards too much protection to the later filer, and enables anti-social evergreening by bulk filers. A golden middle way is needed.

  5. In reply to MaxDrei, I think that the proponents of a referral have a different conceptual view of law, namely as a system where there is some correct answer "out there" to any legal question (that just needs to be divulged by the judges, the Enlarged Board in this case). This correct answer is then not affected by the pleadings of the parties or our advocacy skills, such that there is also no such thing as a premature referral. Any delay just increases legal uncertainty for parties (and EQE candidates, perhaps), in this view. The epi President indeed uses "lack of clarity" a few times in his letter. Perhaps the proponents of a referral have a somewhat Dworkian view, whereas the wait-and-see attitude of the EPO fits with the Hartian view.

  6. Thanks to egna for that suggestion of a contest between Dworkian and Hartian schools of thought. I must say, that had not occurred to me but I daresay he has his finger on the point.

    egna also flags up the difficulties faced by EQE candidates. Quite right too. But in the greater scheme of things, we are talking about the rather short 18 month period covered by Art 54(3) and industry uncertainty about prior art generated within that brief period. That's not the largest source of legal uncertainty in patent law in EPC land, is it?

    Personally, I think the bigger mischief lies in deciding obviousness according to a rubric written differently in the Supreme Court of each separate national jurisdiction of the 38 EPC Member States. Why can't they all accept the established case law of the Boards of Appeal of the EPO, as they do (more or less) already on other repercussions that derive, directly and unambiguously, from acceptance the EPO's "Gold Standard".


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