The Board of Appeal decision in T 1688/20 rejects the usual tests for assessing the novelty of subranges, in favour of applying the Gold Standard test of novelty. In doing so, the Board of Appeal diverges from the established case law and Guidelines for Examination on the novelty of subranges. The Board of Appeals approach leads them to accept both the novelty and inventive step of a subrange that is very close to that of the prior art, and which has an overlapping technical effect with that of the prior art. The decision in T 1688/20 raises questions of how the doctrine of equivalents would be applied to such a claim by the national courts.
Legal Background - Selection Inventions and subranges
European patent law considers a selection of subrange from the prior art as being novel if:
a) the selected subrange is narrower than the known range, and
b) the end-points of the claimed range are sufficiently far 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). However, the “purposive selection” criteria for novelty gradually lost favour with the Boards of Appeal. In T 261/15, for example, the Board of Appeal found 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 (IPKat).
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| Reaching the angle |
Selection of subrange
The decision in T 1688/20 related to the patentee's appeal of the Opposition Division to revoke the patent, on the grounds that the patent as granted lacked novelty. The patent (EP3056283) related to a device for quickly painting cars. The claim specified an applicator wherein, inter alia, air discharged through particular air holes was twisted at an angle of 56 to 59°. The prior art cited against the patent disclosed a device having an equivalent feature with a twist angle of 50 to 60°. The question of novelty thus became whether the subrange specified in the claim was novel in view of the broader range specified in the prior art.
The Opposition Division followed the previous guidelines and case law on and subranges, and applied the 3 step test, including the requirement for the selection to be a "purposive" and non-arbitrary selection. The claim was found to lack novelty.
The Gold Standard test for novelty
The Board of Appeal rejected the Opposition Divisions analysis, and agreed with T 261/15 (and the current Guidelines) that a purposive selection is not required for a selected subrange to be novel (r. 3.2) (IPKat).
The Board of Appeal, however, then went further, and argued against the whole approach taken by Boards of Appeal to the novelty of subranges. The Board of Appeal particularly rejected the remaining two tests for the novelty of a subrange, namely, a) whether the claimed subrange was "narrower" than the known range, and b) whether the endpoints of the claimed subrange were "sufficiently far removed" from the endpoints and specific examples in the prior art.
The Board of Appeal was of the view that the phrases "narrower" and "sufficiently removed" were both open to broad and subjective interpretation (r. 3.2.1), and that there was a lack of clear guidance on how to apply the test. Furthermore, for the Board of Appeal, no test for novelty could supersede the Gold Standard test. The Gold Standard test asks what a skilled person would have derived directly and unambiguously, using common general knowledge, from the prior disclosure. The Board of Appeal therefore decided to ignore all three of the tests for the novelty of a subranges previously stipulated, and instead evaluated whether there was a direct and unambiguous disclosure of the subrange in the prior art.
The Opponent in the case argued that a skilled person would have understood, directly and unambiguously, that the prior art anticipated angle values somewhere in the middle of the disclosed range. Furthermore, it was argued that the skilled person would understand from the disclosure of e.g. "≤60°", that a value of 59° would be the next possible and logical alternative when considering a single degree as the smallest possible difference. As such, ≤60° constituted a direct and unambiguous disclosure of 59°, and thereby directly and unambiguously anticipating the endpoints of the claimed range.
The Board of Appeal was not convinced by the Opponent's arguments. The Board of Appeal first pointed to case law that the boundaries of a range cannot anticipate a specific value in that range (Case Law of the Boards of Appeal, I.C.4.1). For the Board of Appeal, this principle applied even when the claimed value was adjacent to the endpoints of a known range. The Board of Appeal therefore concluded that there was no direct and unambiguous disclosure of the claimed range in the prior art. The feature of 56°≤ and ≤59° was therefore found novel in view of 50°≤ and ≤60°.
The Board of Appeal was also convinced that the selected subrange was associated with a technical effect and that the claimed device was therefore inventive. Particularly, the Board of Appeal was convinced that the selected subrange represented a purposive selection based on the presence of the technical effect. The Board of Appeal rejected the Opponent's argument that the selection was not purposive because the technical effect existed outside of the claimed range (including in the broader prior art range), on the grounds that the prior art did not disclose the presence of the technical effect itself (r.4.2.3). The claims were therefore found both novel and inventive.
Final thoughts
Establishing both novelty and inventive step on the basis of the selection of a subrange that is only a few degrees narrower than the prior art, is an impressive feat. It seems unlikely that the claim would have survived had the tests for novelty of subranges specified by the Guidelines been applied by the Board of Appeal. No matter how subjective a test, convincing a Board of Appeal that 59° is "sufficiently removed" from 60° would have been a challenge. However, it is also difficult to argue against the Board of Appeals reasoning that 59° is not "clear and unambiguous disclosure of 60°". After all, 59 does not equal 60.
The Board of Appeal reasoning on inventive step makes interesting reading in the context of the doctrine of equivalents. The Board of Appeal in this case was perfectly happy to accept the inventiveness of the claims on the basis of a selection that was narrower than the subject matter for which the technical effect of the invention would hold true. Applying UK doctrine of equivalent analysis, however, it is hard to see how a device identical to the claimed device except for a 60° angle (i.e. outside of the claimed range but still embodying the technical effect of the invention), would not infringe under the doctrine of equivalents. However, the Board of Appeal in T 1688/20 also established that such a device would not anticipate or render obvious the claimed invention. Scenarios such as this are dealt with in German law with Formstein defence. UK judges have already observed that an equivalent of the Formstein defence may be permissible in the UK (Technetix v Teleste and Facebook v Voxer). Indeed, with decisions like T 1688/20 from the EPO Boards of Appeal, it can only be a matter of time before an equivalent defence becomes necessary to avoid English patent law becoming nonsensical.
Further reading
- Do we need a referral to the Enlarged Board of Appeal on the novelty of selection inventions? (13 Jan 2020)
- Does the requirement for a "technical contribution" in a novel selection survive? (if selecting from convergent lists) (T 1621/16) (25 March 2020)
- Boards of Appeal back rejection of special criteria for the novelty of purity inventions, but the Guidelines remain out of step (T 0043/18) (30 August 2022)
Reviewed by Rose Hughes
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Tuesday, January 17, 2023
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Posts
Recall the English view of what prejudices novelty, namely, clear and unmistakable directuions or inevitable result. Here, it strikes me as (for all practical purposes) inevitable that a skilled person following the teachings of the prior art will end up with an angle between 56 and 59% in their manufactured product, if only to be sure of staying within the target range of 55 to 60. To be frank, it seems to me then somewhat perverse to find that 56 to 59 has novelty over a prior teaching to stay within a range of 55 to 60. Perhaps the result would have been different if there had been a UK EPA representing one or other of the Opponents?
ReplyDeleteI would quite agree but then the so-called Gold Standard is responsible for a significant degree of mischief at the EPO. The photographic comparison approach, rather than a comparison taking into account the knowledge of the skilled person, has led to the 'poisonous divisional' issue and the EPO's added subject matter Kat-astrophe.
DeleteMy thoughts:
DeleteDecision to novelty:
Comprehensible with regard to gold standard.
Decision on inventive step:
Prior art "essentially 55°" and "50° to 60° ",
claimed subrange "56° to 59°".
This is supposed to be inventive according to the board!?
In my opinion, the disclosure of the prior art suggests the claimed subrange, of course.
In my opinion the decision is not absolutely surprising concernin novelty.
DeleteHowever also in my opinion the decision is as already commented by others"adventurous" with regard to inventive step, to put it mildly. To me there appears to be really no inventive step: 56° to 59° versus about 55° and 50° to 60° .
But the facts of the case are that there was an inventive step in the claimed range. Argue against that on facts by all means, but mere rhetoric based on a personal dislike is no replacement for reasoned arguments supported by facts.
DeleteClaimed subrange: 56° to 59°
DeletePriort art: ≤60°
The priort art disclosure ≤60° is imo a clear, direct and unambiguous hint to the claimed subrange.
Therefore, imo too, the prior art obviously suggests the claimed subrange, thus for me surely no inventive step.
It took quite a long time for the EPO to adapt the Guidelines G-VI, 8(ii) and follow the numerous decisions according to which the third criterion of selection within a range had to be purposive, i.e. that it was not an arbitrary selection.
ReplyDeleteIf I am not wrong, it was the application of the third criterion to prior art under Art 54(3) which was determining in waiting so long to amend the Guidelines.
Now we have a board pushing the border even further and claiming that “narrow” and “sufficiently far removed” were both open to broad and subjective interpretation and that there was a lack of clear guidance on how to apply the test.
In view of the long line of case law on those aspects, this comment is quite surprising.
The present decision is a one off, and it will have to be seen whether other board will follow. I doubt that the Guidelines will be amended in the short time.
This leads to the following comments:
The board has superbly ignored Art 20 RPBA20.
It shows that not only on procedural matters, e.g. form of OP, deletion of claims, but also on substantial matters the boards decide more or less what they want and give the impression to be islands ignoring what is going all around each other. One example, is the claim from some boards that they do not have to show evidence of common general knowledge when the latter is known by members of the board.
Contrary to what is written in the article, the one criterion is not whether the sub range is "narrower" but whether the sub range is "narrow".
ReplyDeleteA sub range is "narrower" than the bigger range by definition, but the question is whether the range is "narrow", i.e. whether it is "much smaller" than the original range.
Either way, I think the Board is correct in stating that the two-criteria approach is incompatible with the gold standard. IMO it is also incompatible with the even more basic "photographic approach".
Of course, the question is what consequences would arise if one would simply give up the 2-criteria approach.
In the present decision, after finding the claims novel, the Board appears to discuss inventive step in a rather adventurous manner.
You assume that "narrow" means "much smaller" but this is a questionable assertion. Any distinction between "narrow" and "narrower" appears artificial.
DeleteIt seems that the board has taken notice of the comments by Derk Visser in epi Information issue 2019(4). There, Visser already complained about the subjective character of the novelty check for subranges, which is not in line with the otherwise used 'golden standard'. Such a difference is especially applicable in Art. 54(3) cases where only novelty can be assessed. I am curious when the same approach will also be used for internet publications, which currently are only deemed to be prior art if the publication could be found with the help of a public web search engine by using one or more keywords all related to the essence of the content of that document and if the publication remained accessible at that URL for a period of time long enough for a member of the public to have direct and unambiguous access to the document (T 1553/06). Also here various subjective parameters are involved which do not belong in the assessment of novelty.
ReplyDeleteIt has always been my opinion that purposive selection for novelty was old hat, and like other such matters (novelty by purity) was destined for the trash. It may seem absurd that sub-ranges can forever be claimed, but patentability still requires an inventive step, which has been found to be the case. The doctrine of equivalents is a problem for the courts to worry about in infringement and not for the EPO to speculate on. If the courts can't square the circle then I suggest they look at the validity of their equivalents doctrine.
ReplyDeleteOn MaxDrei's perverse novelty point, what the skilled person would inevitably do or end up with in their product is an issue of obviousness. Novelty is a question of what someone has already done. If there was a single prior art example of any disclosure or device using a claimed angle, the claim would not be novel.
Anonymous, your novelty test is what someone has already "done". The proper enquiry, you say, is whether "someone" has already been "using" an angle within the claimed range. OK. But my argument is that "someone" already was "using" such an angle.
ReplyDeleteWhether someone was already using the angle is a question of fact. Being too lazy to review the file, I am presuming there was no such fact presented. It may well be that someone was inevitably using the angle, but evidence is required.
Delete@Max, your use of the word 'inevitably' in your example is likely misleading and 'probably' would be better. That leaves some wiggle room to argue 'probably but not necessarily', hence novel. If following the teaching of the prior art would inevitably result in the claimed subject matter, then novelty is not present.
DeleteTo correct part of my comment based on my careless misreading. The carrying out of the prior art method would prejudice novelty of the claim if the inevitable result was a product having the claimed angle. However, the prior art disclosed a broader range so it is not inevitable that the result would be an angle within the claim.
DeleteTwo observations, in response to the answers of earlier today.
Delete1. Actual vs constructive reduction to practice. When D1 is an earlier-published patent application, its worked examples are deemed to have been performed (ie "used"). Proof of actual use is not needed.
2. I doubt that even the English courts require "inevitable" to be proven to a criminal "beyond reasonable doubt" standard. Is not the governing EPO case law that "very much more likely than not" is enough to prejudice novelty? If D1 teaches to stay within the range 55 to 60, is it not (irrespective whether or not it is obvious) almost inevitable that the reader will target the starting material amounts to fall within the range 56 to 59?
The post states the prior art range is 50 to 60 so it is 50:50 whether a random product would be within 56-60. Possible, not probable, certainly not inevitable.
DeleteThe standard "inevitable" is dictated by the word's meaning. Probably a higher standard than a criminal requirement of beyond reasonable doubt.
It is a question of evidence and fact whether repeating a prior art teaching produces (inevitably) a certain product.
Mea Culpa. When I compared the range 55-60 with the claimed 56-59 I was inappropriately factoring in the "ideally 55" teaching of the prior art reference. Absent evidence, operating in the range 50-55 is just as likely as in the range 55-60. So, on these facts, being in the range 56-59 is NOT inevitable.
DeleteIn terms of novelty, this has to be the correct approach. The EPO prides itself on its Gold Standard, which is among the strictest requirements for literal disclosure in the world. If we were considering Art. 123(2) and the application said "50-60, ideally 55", an amendment adding the range "56-59" would certainly be rejected under the Gold Standard. If we are to accept that the Gold Standard should be applied universally for added matter and novelty, it is hard to see why a different approach should have been taken here.
ReplyDeleteThe counter-argument, of course, is that a claim to a broad subset of the prior art should be treated as an exception to the Gold Standard and examined more strictly. Had the Board confirmed that numerical sub-ranges are an exception that require derogation from the Gold Standard, this decision would also have made sense.
The finding on inventive step is surprising. The Board seems to accept that the technical effect asserted for the sub-range is not limited to the sub-range, e.g. it is exhibited at prior art values 55 and 60. In that case, the distinguishing feature (56-59) does not offer any improvement over the prior art. The technical problem is the identification of an alternative value that exhibits the same effect as the prior art. The solution is clearly obvious.
However, this decision is great news for patentees and we will have great fun citing it as august authority in every future range case.
I would not be so quick to claim victory.
DeleteThis decision is for the moment a one-off and it is not certain that other boards will follow.
You say it yourself: "a claim to a broad subset of the prior art should be treated as an exception to the Gold Standard and examined more strictly. Had the Board confirmed that numerical sub-ranges are an exception that require derogation from the Gold Standard, this decision would also have made sense".
I would rather follow this line.
It has puzzled me for decades how the EPO's approach to assessing novelty by selection can produce sensible conclusions in cases where the distinction over the prior art is almost (but not quite) imperceptible.
ReplyDeleteTo illustrate: consider a prior art document (D1) disclosing a compound X having substituent Y, wherein Y is "butyl".
As the chemists amongst you will know, "butyl" is a generic term that encompasses three different isomers, namely n-butyl, s-butyl and t-butyl.
Now consider a later application (A1) claiming compound X having substituent Y, wherein Y is defined as n-butyl (only). Because of the EPO's "gold standard" approach, A1 will be novel over D1, right? After all, D1 does not disclose the species n-butyl, but instead the genus "butyl". And a species is novel over a genus, right?
But then consider a different later application (A2) claiming compound X having substituent Y, wherein Y is defined as n-butyl, s-butyl or t-butyl. Is A2 novel over the disclosure of D1?
It is easy to see how the answer to this could be "yes" if one applies the EPO's gold standard approach. After all, none of the species of A2 (n-butyl, s-butyl and t-butyl) are "individualised" in D1. However, by putting all of those species together, A2 has effectively claimed precisely the same subject matter as D1. That is, it has re-claimed the prior art.
An absurd result indeed. But how does one avoid arriving at that result?
Silly me. There are, of course four isomers of butyl, including isobutyl. But you get the point.
DeleteNot an absurd result. The prior art hasn't specifically identified any single compound falling within the butyl genus. Just a genus disclosure, no worked example, no individidual compound even named.
DeleteThat's novelty. Obviousness is still required for patentability.
Plenty more compounds falling within the butyl genus than the basic 4, so even if n-butyl is named, lots of room for novel compounds within!
Yes, it is an absurd result. Remember that D1 could be Article 54(3) prior art (meaning that establishing novelty over D1 is game over for determining patentability).
DeleteAs to your "plenty more compounds" within the genus comment, I think that you are missing the point. Claiming all four of the butyl isomers provides an identical claim scope to claiming "butyl". It is somewhat similar to claiming "n is 1, 2, 3 or 4" instead of "n is an integer greater than 0 and less than 5". In both cases, each alternative definition in the later claim has not been "individualised" in the earlier disclosure.
I could have raised Art 54(3) as a caveat, but assumed attorneys would understand the limited temporal nature of that provision and the potential for some anomalies. It's effect is not limited to the disclosure of a range, genus or "selection" and does not, however, work to make the application of novelty absurd.
DeleteLegally (decades of case law at the EPO and in national courts), the disclosure of "butyl" is not identical to the disclosure of each of the so-called 4 individual groups. and the analogy relating to "n is 1, 2, 3 or 4" is also not supported by the case law. None of those integers are individually disclosed and each would be novel.
To add again, as noted above, "n-butyl" is itself a broad genus. To extrapolate from that relatively small genus, a chemical Markush claim where each group is disclosed as such a genus, there is potential for a genus disclosure that covers 10 to the power 100 compounds (or more). It would be absurd to argue such a disclosure is identical to a disclosure of each and every compound falling within the genus. Much case law explains this.
Proof, in the situation which you envisage, wouldn't it be possible to argue that claiming all of the butyl isomers collectively - even if in individualised form - amounts to no more and no less than simply claiming the entire genus? In that case, a claim directed to all of the isomers is indistinguishable from a claim directed to the genus, and as such could be said to lack novelty even though the prior disclosure of the genus does not disclose any one of those isomers individually.
DeleteThis approach would avoid the absurd result that you foresee. However, even though I have suggested it, I am not completely convinced by it, as it seems possible to argue to the contrary that a claim reciting each and every member of the butyl genus is simply shorthand for a number of discrete and separate embodiments, each one comprising an alternative member of the genus, and none of which is, as such, anticipated...
This approach would also, potentially, run into difficulties with genus/species claims relating to continuous, rather than discrete, variables.
Perhaps, until recently, the answer would have been not to worry too much about this under novelty, as Article 56 will take care of anything that slips through the net thanks to skilful drafting or loopholes in the case law. But T 1688/20 shows that this isn't a given!
Anon, I have to say that I am puzzled by what appear to me to be your attempts to defend the indefensible. Maybe we are talking at cross purposes.
DeleteTo be absolutely clear, the point that I am making is that there are situations where the technical information conveyed by a generic term is indistinguishable from that conveyed by naming all of the individual members encompassed by the genus.
For example, the technical information conveyed by "n is 1, 2, 3 or 4" is indistinguishable from that conveyed by "n is an integer greater than 0 and less than 5". Similarly, "Y is butyl" conveys the same meaning as "Y is n-butyl, i-butyl, s-butyl or t-butyl".
If the prior art only discloses a genus (and not any of its individual members), EPO case law means that novelty can be acknowledged for:
(1) any individual member of the genus; or
(2) a sub-genus (covering several, but not all, individual members of the genus).
The problem that concerns me is that the case law would also seem to mean that novelty can be acknowledged for:
(3) all of the individual members of the genus, provided that the members are named individually.
That is, it seems that the EPO is prepared to accept situations in which the only "novel" aspect of a claim is the language used to describe precisely the same subject matter as the prior art.
Proof, I am the Anon of Sunday, 22 January 2023 at 22:02:00 GMT. I think I should clarify that I am not the Anon of previous comments in this thread and I'm not trying to defend the indefensible - I think I'm aligned with your reasoning vis-a-vis the "technical information conveyed" by a claim. I assume your comment is directed to the other Anon...
Delete@Anon 22 Jan at 22:02. Yes, it would be possible to make that argument. However, there is no evidence of such a principle being established in the case law of the EPO's Boards.
DeleteThe other problem with that approach is that it is subject to game-playing. For example, one could clam 3 of the 4 isomers in one case and then claim the other in a separate case (perhaps even a divisional of the first).
Also, even if one is dealing with a sub-genus (under scenario (2) above), there are situations where the current EPO case law arguably leads to perverse results.
Consider, for example, a sub-genus that comprises all but one of the individual members that together make up the prior art genus. This could be described as an "(N-1) sub-genus". At some point, N will be such a large number that it is highly implausible that those skilled in the art would have "worked" the prior art genus by selecting the one member of that genus falling outside of the (N-1) sub-genus. Alternatively / additionally, there may be practical factors that would inevitably lead those skilled in the art to "work" the prior art genus by selecting a member of the (N-1) sub-genus.
Whilst I do not know which (hypothetical) principles of novelty might avoid all such perverse results, I think that the "gold standard" approach (particularly as applied in T1688/20) practically encourages applicants to adopt a slice-and-dice approach to re-patenting the (Art 54(3)) prior art.
Surely the requirement of inventive step prevents the sort of behaviour referred to by Anon of 23 Jan @ 14:16? Each (N-1) sub-genus needs to be inventive over its entire scope compared to the N genus.
DeleteIt is possible that the applicant for an EP application to N genus could be aware of various clever technical effects provided by a (N-1) sub-genus, but waits several years to file an EP application to this sub-genus to extend the length of time they can have a monopoly on the (N-1) sub-genus. But this would come with risks, like another party discovering these effects and jumping in with their own application.
With regards to A54(3), no one else can see what is in the application until it publishes, so no risk of another party slicing-and-dicing A54(3) prior art because by the time they file the prior art will now be A54(2), and inventive step raises its majestic head.
Very odd inventive step decision by the Board in T 1688/20 though. I can only imagine the opponent didn't make good arguments - the Board shouldn't have to do all of the work
I am the anon seeking to "defend the indefensible". Is "indistinguishable" a recognised legal term?
DeleteWhatever the answer to that question, it is not relevant to the EPO's assessment of novelty, nor that of other jurisdictions. The Indian patent office will no doubt agree with you.
In respect of examples (1), (2) and (3) [23-jan 9:44 comment], yes, case law states all are novel. For example, disclosure of a "single compound" where that compound is a racemate and therefore a mixture of 2 compounds (identical other than being mirror images - enantiomers), case law (EPO, UK, etc) states that each compound (enantiomer) would be novel, because they are not disclosed in individualised form.
Whilst this may seem indefensible, that is an opinion to which you are entitled, though with which I disagree.
On the final comment: "That is, it seems that the EPO is prepared to accept situations in which the only "novel" aspect of a claim is the language used to describe precisely the same subject matter as the prior art.", I would say that is playing semantics to try and dismiss the the EPO's position as wrong.
However, what is novel is not merely a question of language and semantics, but a question of what is disclosed by the prior art. The individual compounds are not disclosed whether they are from a genus of 2 (enantiomers) or a genus of 10 to the power 100.
I note you did not comment on the latter example - is it indefensible to claim as novel a single compounds from within such a large genus?
@Anon 24 Jan at 16:50
DeleteThe novelty situation for enantiomers (vs. prior art disclosure of a "plain" structure) is completely different to that for each of the four isomers of butyl (vs. prior art disclosure of "butyl").
For enantiomers, there is a continuum (with regard to enantiomeric excess) that runs from the R-isomer, to the racemate and then to the S-isomer. A "plain" structure encompasses all of that continuum.
A generic term (such as "butyl") that only covers a limited number of discrete alternatives therefore presents a very different situation with regard to the meaning that it conveys to a person skilled in the art. That is, it represents a situation where the information conveyed by the generic term is identical to the information conveyed by the (full) collection of discrete alternatives.
In the light of the above, I think that it should be clear that the situation for "butyl" is also quite different to that for a broad chemical genus, the prior disclosure of which will of course not anticipate a (not previously exemplified) single compound.
Me "Defending the Indefensible Anon". The disclosure of a racemate is the disclosure of a genus that is known to encompass 2 compounds, neither enantiomer being disclosed. It is not a disclosure of any continuum such as you describe. "Disclosure" is a term used in patents that has a specific meaning. "Butyl" is also a genus that may exist as a continuum encompassing each isomer (enantiomer being one category of isomer) individually and also every combination thereof. From a chemistry view your position is incorrect.
DeleteThe terminology you use does not correspond to any novelty test at the EPO or in any other jurisdiction. From a novelty view your position is incorrect. Whether novelty law should be amended such that the disclosure of a genus such as "butyl" is deemed to disclose each individual compound is a matter of opinion. Section 3(d) of the Indian Patents Act may be something you would follow.
Another simple (final) example that demonstrates your analogies fail is a compound having 2 stereocentres. How do you treat this genus resulting from a "single compound" drawn "plainly"? What is the continuum from "A" to "B" where this genus is closer to "butyl" than it is to a single pair of enantiomers?
Inevitably, a discussion about patent law requires an understanding of that law, and the same applies to chemistry. Combining both requires an understanding of both, chemistry patents not being "just like lego" as non-experts like to believe to the cost of their clients.
Anon, let's just agree to differ with regard to the chemical examples. We are obviously talking at cross purposes (eg you read "racemate" where I instead referred to "plain structure").
DeletePerhaps it would help instead to consider the comparison between:
"n is 1, 2, 3 or 4"; and
"n is an integer greater than 0 and less than 5".
Would you say that the former is novel over a prior disclosure of the latter?
It seems to me that the present board is behaving like some boards did when they combined G 1/03 with G 2/10. It needed G 1/16 to put the picture straight.
ReplyDeleteStrictly speaking the application of the gold standard can indeed lead to the present result in matters of novelty.
As any rule, there can be exceptions to it, even if those exceptions are to be applied sparingly.
The selection of a smaller range within a larger could be one of those exceptions.
Besides trying to distinguish itself from other boards for the sake of it by throwing overboard a long lasting line of case law, one wonders what the aim of the board could have been.
As far as inventive step is considered, the decision of the board is, let’s put it mildly, surprising not to say odd.
One get the feeling that the present board has acted like a chamber (Senat) of the German Federal Court (BGH) which is well known to be there to save patents as much as possible and for almost every possible reason.