4. Determining the disclosure of the relevant prior art
Overview
4. Determining the disclosure of the relevant prior art
After establishing what information forms part of the state of the art, the next step is to determine its technical content and whether that content is apparent.
The consistent view in the case law is that for an invention to lack novelty, its subject-matter must be clearly and directly derivable from the prior art (see e.g. T 465/92, OJ 1996, 32; T 511/92) and all its features – not just the essential ones – must be known from the prior art (T 411/98). The disclosure of a publication is determined by what knowledge and understanding can and may be expected of the average skilled person in the technical field in question (T 164/92, OJ 1995, 305, Corr. 387; T 582/93).
- T 1553/19
Catchword:
The normal rule of claim construction of reading a feature specified in a claim in its broadest technically meaningful sense corresponds to determining the broadest scope encompassed by the subject-matter being claimed according to a technically sensible reading. In the case of a feature defined in a positive manner, which imposes the presence of a specific element, this is effectively achieved by giving to the element in question its broadest technically sensible meaning. However, for a feature defined in a negative manner, which excludes the presence of a specific element, the broadest scope of the claim corresponds to the narrowest (i.e. most limited) technically sensible definition of the element to be excluded. (Reasons, point 5.7)
- T 1362/19
Catchword:
If an abstract feature is not defined in more concrete terms either in the relevant claim or in the description of the application, it has to be understood in a broad sense. This may be important when assessing the implicit disclosure of a document of the state of the art. In particular, for this assessment it may be irrelevant whether there are several alternatives for implementing the abstract feature in concrete terms (Reasons 2.3.7).
- T 438/19
Catchword:
The following questions are referred to the Enlarged Board of Appeal for decision:
1. Is a product put on the market before the date of filing of a European patent application to be excluded from the state of the art within the meaning of Article 54(2) EPC for the sole reason that its composition or internal structure could not be analysed and reproduced without undue burden by the skilled person before that date? 2. If the answer to question 1 is no, is technical information about said product which was made available to the public before the filing date (e.g. by publication of technical brochure, non-patent or patent literature) state of the art within the meaning of Article 54(2) EPC, irrespective of whether the composition or internal structure of the product could be analysed and reproduced without undue burden by the skilled person before that date? 3. If the answer to question 1 is yes or the answer to question 2 is no, which criteria are to be applied in order to determine whether or not the composition or internal structure of the product could be analysed and reproduced without undue burden within the meaning of opinion G 1/92? In particular, is it required that the composition and internal structure of the product be fully analysable and identically reproducible?
- 2023 compilation “Abstracts of decisions”
- Annual report: case law 2022
- the board referred to the normal rule of claim construction of reading a feature specified in a claim in its broadest technically meaningful sense. It held that this corresponded to determining the broadest scope encompassed by the subjectmatter being claimed according to a technically sensible reading. In the case of a feature defined in a positive manner, which imposes the presence of a specific element (e.g. a component), this was effectively achieved by giving to the element in question its broadest technically sensible meaning. However, for a feature defined in a negative manner, which excluded the presence of a specific element, the broadest scope of the claim corresponded to the narrowest (i.e. most limited) technically sensible definition of the element to be excluded.