Wednesday, 11 December 2019

President says no to President

epi Information 4/2019, just published, comprises epi’s letter to the EPO "Request for Referral to the Enlarged Board of Appeal – Selection Inventions” and the Corresponding Response Letter of the EPO. Unfortunately, the President of the EPO said no to the President of the epi. The uncertainty will thus continue, now that the first instance has made a switch due to the purposive selection criterion being deleted from the novelty test for sub-ranges in the Guidelines as in force since 1 Nov 2019, the Boards having given different decisions over the last few years and the President of the EPO accepting that this may continue for a while, while the Case Law Book from this July refers to the test including purposive selection as established case law and does not identify a clear development of law, towards abandoning it even though it does identify conflicting decisions.

epi Information 4/2019 comprises epi’s letter to the EPO „Request for Referral to the Enlarged Board of Appeal – Selection Inventions” as well as "the Corresponding Response Letter of the EPO", see here

In the epi letter, the President of the epi requests the President of the EPO to refer a question to the Enlarged Board to clarify the criteria for novelty of a sub-range of a known broader range. The question was asked in view of conflicting decisions from the Boards, which have been over the last few years as well as in view of the recent, sudden switch in the Guidelines from the established line to a different, line.
According to the established line, novelty of a sub-range has to satisfy three criteria: i) narrow; ii) far removed from examples (and, in the Guidelines version, from end points); and iii) a purposive selection, which has been followed for over a decade in the Guidelines and by most Boards. Since a few years, some Boards denied the last criterium, and considered it to be part of inventive step rather than novelty - those Board concluded that the earlier, established line of reasoning was incorrect and thus did not refer to the Enlarged Board, despite the decisions being clearly conflicting. But not all Boards followed the new approach: in the last few years, some Boards have continued to use the test including all 3 criteria and the Guidelines continued to do so until and including the November 2018 edition. In view of the  divergence between the decisions and the lack of clarity that arises from it as to which criteria are to be used in assessing the novelty of a sub-range, the President of the epi requested the President of the EPO to refer questions to the Enlarged Board to clarify the matter.

The President of the EPO answered that he considers that a clear trend can be identified towards the abandonment of the third criterion. The President of the EPO considers that a development of law rather than conflicting case law, and as such saw no need for a referral. "Developments in the case law are a normal part of judicial activity and usually take place over a certain period of time, during which there may be decisions going in different directions." The President of the EPO also indicated that he considered it appropriate and sufficient "to alter the Examination Guidelines, but not to having the case law reviewed by the Enlarged Board (G 3/08, reasons 7.3.5)". "With the adaptation of the Guidelines for Examination (G-VI, 8) clarity has been established on how the EPO departments are to assess novelty of such interventions".

The request for a referral was thus denied, first instance practice clarified (although, in my view, the Guidelines paragraph on the November 2019 edition still causes unclarity - see e.g. here in the same epi Information, while this article challenges the tests in other aspects as well), and the President of the EPO assumes that there will be a convergence at the Boards (and accepting that there may be diverging decisions being issued in the next few years still; with the risk of some wrong decisions among them -whatever the correct line may be-, which cannot be challenged).

The letters in epi Information are preceeded by an introductory paragraph. The introductory paragraph in the article in epi Information further reads (see here):

"As reflected by the articles of Derk Visser (Novelty test for sub-ranges) and Roel van Woudenberg (EPO Guidelines November 2019: purposive selection no longer needed for novelty of sub-ranges?), there have recently been discussions in our profession about the novelty of selected sub-ranges, in particular regarding purposive selection. Our Institute has recently written to the President of the EPO, requesting him to refer this question to the Enlarged Board of Appeal. epi‘s letter and the EPO’s response declining to proceed are reproduced below. Should our readers be involved in an appeal involving the selection of a continuous sub-range, they may wish to request a referral of this question under Article 112(1)(a) EPC as being a point of law of fundamental importance." ]emphasis added]
Hereby, the epi calls upon all European patent attorneys and other reasons to try to get the topic to clarity by requesting the Boards of Appeal for a referral. Let's hope that Boards from either line, with or without purposive selection, will grant such a request!

The letters referred to above have been published in epi Information 4/2019 (pdf) . The image from the epi Letter is taken from epi Information 4/2019.


  1. Has there been a somewhat recent decision that discusses the new line and rejects it?

    1. Yes. See letter of President from the epi.

      The Case Law Book does not give any rise to any doubt as to what is established case law:

      I.C.6.3.1, Selection from a broad range provides:
      "The principles applied by the boards of appeal as part of their established case law on the novelty of selection inventions were developed in particular in T 198/84 (OJ 1985, 209). They are summarised briefly in T 279/89, according to which a selection of a sub-range of numerical values from a broader range is new when each of the following criteria is satisfied:

      (a) the selected sub-range should be narrow;

      (b) the selected sub-range should be sufficiently far removed from the known range illustrated by means of examples;

      (c) the selected area should not provide an arbitrary specimen from the prior art, i.e. not a mere embodiment of the prior description, but another invention (purposive selection).

      The Guidelines recall the three criteria (see G‑VI, 8 (ii) – November 2018 version).

      The three postulates for the novelty of a selected sub-range are based on the premise that novelty is an absolute concept. It is therefore not sufficient merely for the wording of the definition of an invention to be different. What has to be established in the examination as to novelty is whether the state of the art is such as to make the subject-matter of the invention available to the skilled person in a technical teaching (T 198/84, OJ 1985, 209; see also T 12/81, OJ 1982, 296; T 181/82, OJ 1984, 401; T 17/85, OJ 1986, 406).

      With reference to the third criterion, the board in T 198/84 was of the opinion that this view of novelty really entailed more than just a formal delimitation vis-à-vis the state of the art. There would be delimitation only in respect of the wording of the definition of the invention, but not in respect of its content, if the selection were arbitrary, i.e. if the selected range only had the same properties and capabilities as the whole range, so that what had been selected was only an arbitrary specimen from the prior art. This was not the case if the effect of the selection, e.g. a substantial improvement in yield, occurred in all probability only within the selected range, but not over the whole known range (purposive selection)."

      It also provides:
      "With reference to the third criterion (criterion "(c)"), several decisions consider that purposive selection is relevant for assessing inventive step but not novelty"
      But it nowhere indicates that these deviating decisions resulted in the established case law abandoning the third criterion.

      Kind regards, K.

    2. Yes, there are quite some that cite and follow T 279/89, even though the last criterion is not always tested as novelty often already fails on the first or the second criterion:

      The letter of President from the epi mentions:
      T 66/12 of 9.11.2016 - reason 2.2.5: novelty failed on lack of purposive selection
      T 673/12 of 10.3.2014 – reason 2.2 lists all three criteria; in reason 2.3: novelty fails already on second criterion (not far from known example 1 of D3)

      If you search on the Decisions webpage on which decisions cite T 279/89, you can also find:
      T 2352/16 of 12.11.2018 – follows T 279/89 in reason 1.2 : novelty fails on first criterion (area claimed covers more than two powers of ten and is therefore not narrow)
      T 1338/14 of 12.7.2018 - follows T 279/89 in reason 1.6 : novelty fails already on second criterion (not far removed)
      T 2438/13 () of 23.6.2017 - follows T 279/89 in reason 2.6.4 : novelty fails already on second criterion

    3. Well, none of the decisions mentioned here seems to discuss and reject the new line. (And I don't see a conflict if a board simply cites T 279/89 and finds that novelty fails on the first or second criterion. In such case the question whether the third criterion still exists is academic. Boards do not deal with academic questions but decide cases.)

      It is not ideal if decisions keep coming out where neither the parties nor the board seem to have been aware of the new line being taken by the boards that regularly deal with selection inventions, but I would agree with the EPO president that this is not a situation where a referral is necessary.

      If a party finds itself before a board that seems to think the old line is still valid law, there is nothing that prevents the party to confront the board with the new line and thereby force the board either to follow the new line or to give reasons why it rejects the new line (in which case a referral by the EPO president might start to make sense even though ultimately this should affect only cases dealing with 54(3) prior art).

    4. If the reason that a Board follows a decision that conflicts with what the Boards themselves label "established case law", repeatedly and also in the most recent version of the case law book, already a good enough reason for a referral?
      If the case law book classifies a line of reasoning as established case law, applicants, proprietors, opponents and third parties should -in my view- be able to rely on that line being followed, donot you agree?
      And if established case law would change from one into to another without a referral, should it not be the Boards that indicate so themselves and should it not be reflected in the case law book as well before it may have effect as established case law and should it not only reflect to new cases (in view of the principle of legitimate expectations)? Is it not strange that the Guidelines decide on an (alleged) change of direction at Board level (as indicated in the President's letter), rather than following the indication by the Boards as to what is established case law?

      By the way, I am not sure whether it would really effect only 54(3) prior art cases. Also, as indicated in my article in epi Information, the rational behind purposive selection being a novelty criterion is also behind e.g. the seriously contemplating for overlapping ranges. It also relates to the more general issue as to what the skilled person directly and unambiguously derived from a single value of a continuous parameter, and in relation to that of endpoints of known ranges (where case law is also conflicting). lastly, the Enlarged Board clearly clarifies that the skilled person has an understanding - a numerical value as such has no meaning, it is the claimed object with a feature having a certain numeral value that the skilled person understands: that understanding includes the purpose/effect/aim of the claimed object as a whole, as well as of prior art disclosures as a whole (which is also reflected in identifying the closest prior art in inventive step: closest prior art is also not just decided based on mere correspondence of terminology, but of a correspondence of the meaning/relevance of things).

  2. I agree that purposive selection is required as requirement.

    Based on principle that prior art disclosure is assessed same way as application as filed disclosure:

    GL H-IV, 2.2 "Literal support is, however, not required by the wording of Art. 123(2) (see T 667/08)." & ""When assessing the conformity of the amended claims with the requirements of Art. 123(2), the focus should be placed on what is really disclosed to the skilled person by the documents as filed as directed to a technical audience. In particular, the examining division should avoid disproportionally focusing on the structure of the claims as filed to the detriment of the subject-matter that the skilled person would directly and unambiguously derive from the application as a whole."
    --> only checking numbers is similar as requiring literal support and is disproportionally focusing on the structure of the claims as filed to the detriment of the subject-matter that the skilled person would directly and unambiguously derive from the application as a whole.