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The EPO has published its yearly update to the Guidelines for Examination, which will come into force on 1 November 2019. The updated Guidelines for Examination can be found here, with a list of the amendments made compared to the current version available here. In general, the changes seek to bring the Guidelines for Examination into line with current practice and recent Board of Appeal decisions.
One change of particular note relates to how the EPO assesses novelty for a sub-range selected from a broader numerical range found in the prior art. The previous version of the Guidelines for Examination (see G-VI-8) cited T 198/84 and stated that the following three criteria needed to be satisfied for a finding of novelty:
(a) the selected sub-range is narrow compared to the known range;
(b) the selected sub-range is sufficiently far removed from any specific examples disclosed in the prior art and from the end-points of the known range;
(c) the selected range is not an arbitrary specimen of the prior art, i.e. not a mere embodiment of the prior art, but another invention (purposive selection, new technical teaching).
The requirement that the selected range is “purposive” [i.e. criterion (c)] has been removed from G-VI-8 of the updated Guidelines. Criteria (a) and (b) remain unchanged. These amendments bring the Guidelines into line with a number of recent Board of Appeal decisions, including T 261/15, in which the Boards of Appeal have departed from the requirement for selected range to be “purposive”.
The Boards of Appeal have indicated in those recent decisions that the requirement for the selected range to be a purposive selection should be considered a matter of inventive step, rather than novelty. Although the ultimate conclusion on patentability may therefore end up being the same when the prior art in question is available for the assessment of inventive step, it will be easier under the new test to establish novelty for a sub-range if the prior art is “novelty only” prior art under Article 54(3) EPC. That is because there will be no requirement in such cases to establish that the selected range is purposive, merely that it is narrow compared to, and distant from, the known range.
If you have any questions concerning the above changes, or any of the other changes to the Guidelines for Examination, please contact Chris Milton or your usual J A Kemp contact.