Novelty-only prior art for European Patent Applications

For an application for a patent to be granted , it must include claims that are at least novel and inventive.

Claims will be considered novel if their subject matter does not form part of the state of the art. The state of the art includes everything made available to the public, whether in writing, by oral disclosure, through use or demonstration, or in any other non-confidential way. Additionally, the content of patent applications as filed, the dates of filing of which are prior to the date referred to in paragraph 2 and which were published on or after that date, are considered as comprised in the state of the art. Patent applications are not typically disclosed between the date of filing and the date of publication (publication usually occurs approximately 18 months after filing).

Inventiveness is a slightly trickier concept. Broadly speaking, something is inventive if it solves a technical problem and if a person skilled in the art would not have found it obvious. For example, if no one had ever made a blue car before, a blue car would be novel. Blue cars probably would not be inventive, though, because no technical problem is solved by painting a car blue, and because the colour blue is already known, so the skilled person would find it obvious to paint a car blue. While this example is a simple one, determining inventiveness can be notoriously challenging, particularly in rapidly developing technical fields.

Therefore, a new patent application has to be novel over all of the prior art, and over other patent applications that were filed before the priority date of the new application but published after the priority date of the new application. To make life slightly easier, it is only necessary for the new application to be novel over earlier unpublished applications (which make up so called “novelty-only prior art”). New applications do not also have to be inventive over such novelty only prior art.

Furthermore, not all applications filed anywhere in the world can be considered for these purposes. Specifically, if you file a European patent application, other European patent applications can be novelty only prior art. This includes international (PCT) applications but only if:

1. The fee has been paid to enter the European regional phase of the PCT application; and

2. If the PCT application was not in English, French, or German, a translation has been filed in one of those languages.

In most cases, if the above two criteria are fulfilled, additional steps will be taken to validly enter the European regional phase. However, this does not always happen. As such there is a possible point of confusion, as the presumption is often that it is European applications and PCT applications that have entered the European regional phase that are relevant. This is not correct, as the European regional phase need not necessarily be entered.

On 7 July 2021, the European patent office (EPO) indicated that they would start to identify such PCT documents in the European Patent Bulletin. Although the above points have been true for some time, the European Patent Bulletin previously highlighted PCT applications that did not enter the European phase. Now it will also identify PCT applications that did not enter the European phase, but which did meet the above two criteria, and which thus may still be considered for the assessment of novelty of other, later applications.

While this does not lead to a change in patent practise, we consider that it will be helpful information for applicants. Without a knowledge of what is included in the state of the art, it is of course difficult to determine patentability. Accordingly, this is a welcome improvement to the European Patent Bulletin.

If you are considering filing a new patent application, or you would like help with the assessment of novelty or inventiveness of an existing patent application, please get in touch. We would be happy to advise.