30 October 2019

Guidelines 2019 – What has changed?

Every year, a new version of the Guidelines for Examination is introduced on 1 November. This is the handbook for Examiners for the assessment of European patent applications. The new version incorporates developments in case law and from the practice of the previous year. Many of the changes are subtle clarifications and nuances. One of the more significant changes involves "selection inventions".

For novelty, the default rule applies: if a genus is known, a species of it can still be novel. So if an older document mentions metal (without further specification), then an embodiment using copper is novel. The first requirement for patentability has then been met, after which the question arises whether this choice is inventive or not.

But what about if you're not talking about countable lists, but about ranges? If the state of the art is talking about "between 20 and 40%", does this mean that "between 25 and 26%" is novel? For a long time this question was answered on the basis of three questions:

(a) Is the new range "narrow"?
(b) Is the new range sufficiently far removed from the preferred embodiment(s) of the known range?
(c) Is there a targeted choice or "purposive selection"?

If each answer is yes, the new range was deemed novel. The third question has always been slightly unusual, however, because it led to elements of inventiveness creeping into the assessment of novelty.

T261/15 changed this, and as a result criterion (c) in Chapter G-VI, 8 was deleted. From the assessment of novelty, that is , because the question will of course come up again when assessing inventiveness. Therefore, it is now mentioned in the chapter on inventiveness of selection inventions, Chapter G-VI, 12 .

All of this may appear to be a formal issue, which has little impact on the outcome. But this does not apply in all cases: if, for example, an intermediate document is quoted (filed before the filing date of the application under consideration but not published until after this date), this document can only be used for the assessment of novelty, and not for the assessment of inventiveness.

A full list of all changes can be found on the Website of the European Patent Office. When clicking through to a specific chapter, checking "Show modifications" in the upper right corner will display exactly what has changed.