The present decision brings us back to the beginnings of European patent case law. Long ago, the EPO sometimes used the “novelty test” for assessing whether A 123(2) was infringed or not.
[…] The Board thus finds that the combination of features of claim 1 was directly and unambiguously derivable from the teaching of the description. Claim 1 thus complies with the requirements of A 123(2). [1.1.3]
As regards the so-called “novelty test”, i.e. a test for establishing if the amendments generate “novel” subject-matter, invoked by the Appellant, the Board finds that this test is not to be applied in a case like the present one wherein preferred embodiments of an invention are combined with the more general teaching thereof, since the amended subject-matter, though not being disclosed as such, can be a possible embodiment of the invention directly and unambiguously derivable by the skilled person from the explicit teaching of the original documents of the application. Therefore, in such a case, the patent (application) is not amended in such a way that it contains subject-matter which extends beyond the content of the application as filed. In fact, the “novelty test” is fact no longer considered to be a reliable tool for evaluating the admissibility of amendments under A 123(2) (see Case Law of the Boards of Appeal of the EPO, 5th edition, 2006, III.A.2.3). [1.1.4]
The “novelty test” could be expressed in the following terms: “Is the claim as amended novel over the disclosure of the application as filed ? If so, then the amendment violates A 123(2).”
Now this statement is certainly correct. It also takes into account that the case law applies the same principle (“… directly and unambiguously …”) to both A 54 and A 123 (and we might add A 76 and A 87 to that list). Why then is the novelty test rejected ? I would say that passing the “novelty test” is a necessary but not sufficient criterion for compliance with A 123(2). In other words, if the amendment does not pass the “novelty test”, A 123(2) is infringed, but the contrary does not hold true. An example might help.
Suppose that you have described and claimed a device comprising an active substance, wherein the active substance is taken from class {A} = {A1, A2, … An}. Only class members A1 to A5 are explicitly disclosed. You then amend the claim to cover a device wherein the active substance is A27. The amendment does not pass the novelty test, because the disclosure of the device having an active substance taken from class {A} does not anticipate the device having A27 as active substance; therefore, new subject-matter is created. A 123(2) is violated as there is no disclosure of the device having A27 as active substance in the application as filed. The novelty test works well in this case.
Suppose now that you have rather described and claimed a device comprising an active substance, wherein the active substance is A27. You then amend the claim to cover a more general device wherein the active substance is taken from class {A} to which A27 belongs. The amendment does pass the novelty test because the device having an active substance taken from class {A} is anticipated by the device having A27 as active substance; no novel subject-matter is generated. However, as the application as filed does not contain a disclosure of a device wherein the active substance is taken from class {A}, A 123(2) is violated. The novelty test does not detect this violation of A 123(2).
To read the whole decision, click here.
Now this statement is certainly correct. It also takes into account that the case law applies the same principle (“… directly and unambiguously …”) to both A 54 and A 123 (and we might add A 76 and A 87 to that list). Why then is the novelty test rejected ? I would say that passing the “novelty test” is a necessary but not sufficient criterion for compliance with A 123(2). In other words, if the amendment does not pass the “novelty test”, A 123(2) is infringed, but the contrary does not hold true. An example might help.
Suppose that you have described and claimed a device comprising an active substance, wherein the active substance is taken from class {A} = {A1, A2, … An}. Only class members A1 to A5 are explicitly disclosed. You then amend the claim to cover a device wherein the active substance is A27. The amendment does not pass the novelty test, because the disclosure of the device having an active substance taken from class {A} does not anticipate the device having A27 as active substance; therefore, new subject-matter is created. A 123(2) is violated as there is no disclosure of the device having A27 as active substance in the application as filed. The novelty test works well in this case.
Suppose now that you have rather described and claimed a device comprising an active substance, wherein the active substance is A27. You then amend the claim to cover a more general device wherein the active substance is taken from class {A} to which A27 belongs. The amendment does pass the novelty test because the device having an active substance taken from class {A} is anticipated by the device having A27 as active substance; no novel subject-matter is generated. However, as the application as filed does not contain a disclosure of a device wherein the active substance is taken from class {A}, A 123(2) is violated. The novelty test does not detect this violation of A 123(2).
To read the whole decision, click here.
4 comments:
I fully agree with your comment that the novelty test can be used to show that Art. 123(2) is NOT complied with. However, this is exactly what the appellant (opponent) was trying to show by referring to the novelty test. It is a bit strange that in this context the Board refutes the appellant's argument by dismissing the novelty test.
In my view the Board should have pointed out instead that it has held (in pt. 1.1.3) that the application as filed implicitly disclosed the combination of features found on page 22 and 40 (see par. VI).
(The reasoning in pt. 1.1.3 does not convince me that this combination is indeed implicitly disclosed, though... So one could also argue that the Board here considers that the 123(2)-test is more like an obviousness-type test than a novelty-type test, which clearly conflicts with long established case law.)
Since this is my first comment on your blog, I'll use this opportunity to say that I greatly enjoy reading it!
Point well taken. Thanks.
Let me add, as an EPO examiner, that we are tought to apply the novelty test only to amendments that amount to a further limitation or addition, and not to amendments amounting to a generalization or omission. For the latter, we apply the so-called "modified novelty/essentiality test". See Guidelines C-VI 5.3.10. This test holds for the removal/generalisation of a feature that such does not contravene Art 123(2) if:
- the feature was not explained as essential
- the feature is not indispensible in view of the technical problem inderlying the invention
- it does not require a real modification of other features to compensate for the change
Thanks for your blog, I think it very helpful and interesting
I am honoured to see that I have EPO Examiners among my readers. Thanks for your comment.
PS : There is a recent decision on the essentiality test that I plan to comment on in the near future.
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