1. The European Patent Office An introduction to patentability requirements in Europe
Rodolphe Bauer, Frédéric Dedek, Gareth Jenkins, Cristina Margarido
Patent Examiners, EPO
October 2013
19/04/2017

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.
Reveal
invention
Get
exclusivity

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.
Novelty is one of the requirements for patentability, set out in Article 52(1). The other requirements are inventive step and industrial applicability.
Article 52 EPC 5

6. Article 53 Exceptions to patentability
European patents shall not be granted in respect of:
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;
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 7

8. Novelty Would you grant a patent for something which is already known?
Why do we search & examine for novelty?
An electric light bulb
as has been used
for decades
A patent application
filed yesterday
A patent is a kind of contract: the applicant makes available to the public new technical information which was not known before and is granted in exchange for this a monopoly, ie the right to exploit his invention for a number of years on a certain territory.
Therefore a patent is granted only for something which did not exist before, that is, in patent language,for something which is NEW.
Would you grant a patent for something which is already known?

9. What does "new" mean? Already known Already known Patent application
„New“ means :
To make available to the public something that was not known before.
NOTE:
Although the globe per se was known, the presence of the middle ring (eg in order to incresase stability) is a new feature which renders it new over the prior art.
The following comments can make it easier for the trainees to grasp the importance of the definition of "new":
Note that in the patent world, the term "new" is used in a different sense than in everyday's life.
Indeed, if you got a "new" boyfriend or girlfriend, in the common sense this means that he or she became your boyfriend or girlfriend only recently; after being together for half a year or a year, you will (presumably) not call him or her your "new" boyfriend or girlfriend any more. If you buy yourself a car, you got a "new" car and you will call it your "new" car for at least a certain time (months, years). After that, it will just be your car, since everything which has been new gets old in common sense speaking.
Things are different in patent language. As a matter of fact, if something has not been shown to the public before in an identical way, it is different from what people had seen before, and therefore it is new.
Moreover, once it is new in patent language, it will always be new!
So, if you buy a non-used Mercedes brand car which has been sold on the market since three months only, this Mercedes is not "new" in patent language.
But if you buy a used Mercedes and if you are the first one ever to paint the bumpers in pink, your Mercedes with pink bumpers is new and will always be new in patent language (even if the car has been produced 20 years ago)!
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) ....
The requirement of novelty is defined in Article 54(1) of the EPC.
In order to give the trainees the chance to get aware of the impact of this definition and its influence on daily work, it might be adequate to point out that the definition of "new" is in fact a negative definition.
Indeed, to prove that an invention is really new would imply that you must consider each item of the prior art, and check out that this item is not identical to the invention. This would result in a huge amount of work.
Luckily, we can work the other way round: it is sufficient to find one single example in the prior art, which discloses an item identical to the invention. This single example would prove that the item is not new.
Article 54 EPC 10

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
According to Article 54(2), the state of the art is everything made available to the public, anywhere, in any language, by any means, e.g. oral or written description, use and so on, before the filing date of an application.
Available to the public means that:
• at least one member of the public had access to the information before the filing date of the application; and
• this person was not bound to secrecy or confidentiality.
For example, only one copy of a PhD thesis in Korean is put into a university library: it is available even if nobody consults it.
Internet information may be prior art, as long as you can prove that the information was on the web at a certain date.
or in any other way
Article 54(2) EPC 11

12. Which disclosures can we use?
Filing date
2006
2007
2008
2009
2010
2011
2012
time
Priority date
Stress that the information must have been made available BEFORE the date of filing or of the priority of the application!
This is clearly defined in Art. 54(2) EPC
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
A useful tool that helps interpret the claim in its widest reasonable meaning is the so-called feature analysis.
This essentially consists of listing all the technical features of a claim against the features of the prior art. The features of the claims are then compared with those of the prior art, each feature being attributed the basic meaning that it normally has in the specific technical field.
If one or more of these features are missing in the prior art document, then the object of the claim is new.

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
Here is an example of how this technique works.
Read out the claim and draw it on a flip chart as illustrated in the „white“ drawing.
Allow the participants a couple of minutes to decide which of the objects A-F falls within the definition of the claim. Be aware that different participants may have different interpretations. This is a good example for discussion. Even for novelty there is a "scope of interpretation".
Model Answer:
E clearly meets the definition as it includes all the features of the watering device.
A and B do not include a lid and thus do not meet the definition.
Strictly speaking, C has neither a handle nor a spout although it could be argued and accepted that the bottle neck can be equated with a spout (this is namely defined as a „projecting pipe or tube“). The same argument applies to the flask F.
The thermos jug D has a spout but no handle and therefore cannot be read onto the definition.
If instead of a handle a holding element had been specified, C,D and F would also have satisfied the definition as all of them have a shaped portion for holding the bottle, the jug and the flask respectively.
This example shows how important is the selection of the terms when drafting a claim.
IMPORTANT:
Sometimes this "exercise slide" leaves the trainees uncomfortable if just dealt with as part of the presentation about novelty in an "ex-cathedra" way. As a matter of fact, there is no single, unambiguously correct solution for this exercise, and normally you can expect rather vivid discussions concerning e.g.:
- what is disclosed in a picture and what is not;
- what a handle is (and what cannot be called a handle);
- what an oil can is (does not seem to be known worldwide);
- what could be considered as a handle on the Coca-Cola bottle;
- whether the straw in the Coca-Cola bottle is a spout as defined;
- whether the upper part of the bottle is already a spout (important for the wine bottle);
- whether the spout for D is at the same time a handle or not...
These discussion points deserve to be treated in detail, as soon as they pop up.
In fact it appears to be very important for the trainees to note and experience that a novelty analysis is not always quite simple. And this is a good opportunity to deal with "directly and unambiguously derivable" as a help for determining the contents of a document. Further it is an opportunity to make the trainees aware of interpretation possibilities of claim wordings (e.g. definition of a "handle"...). Discussion normally leads you in unexpected directions.
Therefore it might be strongly advisable to take this slide as a separate exercise on novelty, e.g. a 30' group discussion as a kind of interlude. 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"
When examining a claim for novelty we should also be aware of features which are claimed implicitly, i.e. features that are not stated directly but that can be derived as a necessary consequence of what is stated.
Example: it is implicit in the very functional definition of each of the two hooks (for a crane and for fishing) that each of them has individual and specific differences, eg in respect of strength, size and weight.
Despite the shape of the hooks possibly being the same, they are so different in terms of structural and functional features that neither of them can be opposed to the other for the purpose of novelty.
Additional example: a disclosure of rubber in circumstances where clearly its elastic properties are used even if this is not explicitly stated. See also the example in EPO Guidelines C-III-4.13 relating to the mould for molten steel and the plastic ice cube tray.

16. Combination of documents
Can we use a combination of documents to attack novelty?
If all the technical features of the claim are not disclosed in combination in one prior art document, it is a question of obviousness and not of novelty whether or not the skilled person would have combined unconnected information to arrive at the invention claimed.
Therefore, as a matter of principle, we may not use a combination of documents or the combination of different non-linked embodiments of one prior art document for attacking novelty.
However, under some very special circumstances which come up only very seldom and are set out in the EPO Guidelines under C-IV-9.1, it is possible to combine documents for a novelty attack. Essentially, this is allowed when the first document makes an explicit reference to a second document for details of features disclosed in the first document. In this case, in fact, the two documents can be seen as one and the same document.
The only other case foreseen by the Guidelines is that of a dictionary that can always be combined with an item of prior art in order to understand the meaning of technical terms or expressions used in that prior art.
"Sometimes a feature is indeed mandatorily included, but you had to check it out in order to be sure".
Your claim reads "A wire made of a metal with a density of 19,3 g/ml".
In one catalogue you find gold and silver wires, but you don't remember the density of these metals.
In a technical table you find that gold has a density of 19,3 g/ml.
So clearly the claimed "wire made of a metal with a density of 19,3 g/ml" already exists.
However, you did not find all the features in one document."

17. Novelty: Equivalents (1)
Claim
A watering can of aluminium
Prior art
A watering can of zinc
NEW
If something is equivalent to something else, it is clearly not the same thing: A watering can of zinc, under most points of view (e.g. ruggedness), is perfectly equivalent to a watering can of aluminium. However they are not the same thing, as they are made of two distinct metals.

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
Stated in patent terms, the zinc does not take away the novelty of the aluminium and vice versa and we may not use a watering can of zinc to prove that a watering can of aluminium is not new.
To employ an equivalent to what is disclosed is a matter of obviousness not of novelty, as we will see later in the course.

19. Generic disclosures vs. specific examples
Claim
A watering can made of metal
Prior art
A watering can made of aluminium
The disclosure of a specific example (aluminium) takes away the novelty of a generic term (metal) that includes the specific example.
In contrast, disclosure by means of a generic term (metal) does not usually take away the novelty of a specific example (aluminium) that falls within the generic term.
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
Claim
A watering can made of metal
Prior art
A watering can made of aluminium
In view of this, the watering can of the claim of the example is not new.
(Of course, if the can of the claim had been of aluminium and that of the prior art of metal, then the can of the claim would have been new).

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 21

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."
The requirement of inventive step is defined in Article 56 of the EPC. It reads, "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 22

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.
The person skilled in the art is different form the ordinary man in the street, who has no particular knowledge of a technical field.
In contrast, the person skilled in the art is presumed to be a skilled practitioner, aware of what was common general knowledge in the art at the relevant date.
He is also presumed to have had access to everything in the state of the art. In particular, he knows all the documents cited in the search report. Facilities for routine work and experimentation are also presumed.
If the problem prompts the person skilled in the art to seek its solution in another technical field, the specialist in that other field is the person qualified to solve the problem.
The assessment of whether the solution involves an inventive step must, therefore, be based on that specialist's knowledge and ability.
There may be instances where it is more appropriate to think in terms of a group, e.g. a research or production team, than of a single person. This may apply, for example, in certain advanced or highly specialised technologies. Examples are computers, telephone systems, and the production of integrated circuits or of complex chemical substances. 23

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.
To decide whether or not an invention is obvious, various tests are used 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 Board of Appeal of the EPO the Problem-and-solution approach was used to resolve the question of inventive step.
You will not find the expression “Problem-and-solution approach" in the EPC. Nevertheless, it is now the standard tool for assessing the presence of an inventive step. 24

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?
The Problem-and-solution approach is performed in three stages, as indicated in the EPO Guidelines, Part G-VII 5
First, determine the closest prior art.
Based on this, establish the objective technical problem to be solved.
Finally, consider whether the claimed invention, starting from the closest prior art and the objective technical problem, would have been obvious to a skilled person.
EPO Guidelines G-VII, 5 25

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 ?
Now we will turn to five questions, which will help you to carry out the three stages of the Problem-solution approach as shown.
1. What is the closest prior art? (This corresponds to Stage 1 .)
2. What is the difference, in terms of the claimed technical features, between the invention on the one hand, and the closest prior art on the other?
3. What technical effect is caused by this difference? 26

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 A B C D E F
Now we will look at each of these questions in more detail.
For a correct application of the problem solution approach, it is essential to determine the closest prior art correctly. However, this can sometimes be difficult. Normally, it is the structurally closest prior art, subject to the provisions that:
- it must be in the field with which the invention is concerned, and
- if there is a choice of prior art, the one which was known to have functions or properties related to the invention is preferred. 27

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. A B C D E F
Now, we determine the differences, in terms of the claimed technical features, between the invention and the closest prior art.
We identify all the features which render the claimed subject-matter novel in view of the closest prior art only. 28

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!
What technical effect is caused by the differences? It may be that there is no technical effect over the closest prior art, e.g. if the claimed invention just provides an alternative to a solution already known from the closest prior art. 29

30. Subjective problem vs. objective problem
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."
In the context of the Problem-and-solution approach, the technical problem is the aim and task of modifying or adapting the closest prior art to provide the technical effects that the invention provides over the closest prior art. The technical problem thus defined is often referred to as the objective technical problem.  
The objective technical problem may be different from the problem the applicant presented as in the application. The latter is called the subjective problem. The applicant may have started from a different, often more remote, item of prior art. In contrast, the objective technical problem is based on objectively established facts, in which may be different from the prior art of which the applicant was aware at the time the application was filed. Hence, the prior art cited in the search report may put the invention in an entirely different perspective from that apparent from reading the application only.
It is important not to include elements of the claimed solution in the problem. If the objective technical problem includes elements of the solution, the invention might appear more obvious. 30

31. 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?
"would" vs. "could"
combination of two prior art documents normally used
The last question to be answered here is whether there is any teaching in the prior art as a whole that would -- not simply could, but would -- have prompted the skilled person, to adapt the closest prior art, so as to arrive at something falling within the terms of the claims, and so achieving what the invention achieves. The point is not whether the skilled person could have arrived at the invention by adapting the closest prior art, but whether she would have done so, in the hope of solving the objective technical problem, or in expectation of some improvement or advantage.
This question must be answered for the skilled person before the filing date, or the valid priority date of the claim. Would it have been obvious at that time?
For an inventive step objection, two teachings are combined, either from two documents, or from a single document which contains two independent teachings. A further possible inventive step objection could be based on the combination of a single document with the general technical knowledge of the person skilled in the art. 31

32. THEN the invention is not obvious
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
If the prior art, including the closest prior art, does not provide any 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. 32

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 33

34. Thank you for your attention.
Need more information?
Visit
Contact us at
Follow us on
twitter.com/EPOorg
Thank you for your attention.