This post is based on a previous article on IPKat.
The Board of Appeal decision in T 1688/20 rejects the usual tests for assessing the novelty of subranges, in favour of applying the Gold Standard test of novelty. In doing so, the Board of Appeal diverges from the established case law and Guidelines for Examination on the novelty of subranges. The Board of Appeals approach leads them to accept both the novelty and inventive step of a subrange that is very close to that of the prior art, and which has an overlapping technical effect with that of the prior art. The decision in T 1688/20 raises questions of how the doctrine of equivalents would be applied to such a claim by the national courts.
Legal Background – Selection Inventions and subranges
European patent law considers a selection of subrange from the prior art as being novel if:
a) the selected subrange is narrower than the known range, and
b) the end-points of the claimed range are sufficiently far removed from the individual elements disclosed in the prior art.
For many years, the EPO Guidelines for Examination (the “guidelines”) stated an additional requirement that the selection must also be non-arbitrary or “purposive” (T 0198/84). However, the “purposive selection” criteria for novelty gradually lost favour with the Boards of Appeal. In T 261/15, for example, the Board of Appeal found that the purposive selection requirement was more akin to an assessment of inventive step as opposed to novelty. The 2019 EPO guidelines were subsequently updated to remove the “purposive selection” criteria.
Selection of subrange
The decision in T 1688/20 related to the patentee’s appeal of the Opposition Division to revoke the patent, on the grounds that the patent as granted lacked novelty. The patent (EP3056283) related to a device for quickly painting cars. The claim specified an applicator wherein, inter alia, air discharged through particular air holes was twisted at an angle of 56 to 59°. The prior art cited against the patent disclosed a device having an equivalent feature with a twist angle of 50 to 60°. The question of novelty thus became whether the subrange specified in the claim was novel in view of the broader range specified in the prior art.
The Opposition Division followed the previous guidelines and case law on and subranges, and applied the 3 step test, including the requirement for the selection to be a “purposive” and non-arbitrary selection. The claim was found to lack novelty.
The Gold Standard test for novelty
The Board of Appeal rejected the Opposition Divisions analysis, and agreed with T 261/15 (and the current Guidelines) that a purposive selection is not required for a selected subrange to be novel (r. 3.2).
The Board of Appeal, however, then went further, and argued against the whole approach taken by Boards of Appeal to the novelty of subranges. The Board of Appeal particularly rejected the remaining two tests for the novelty of a subrange, namely, a) whether the claimed subrange was “narrower” than the known range, and b) whether the endpoints of the claimed subrange were “sufficiently far removed” from the endpoints and specific examples in the prior art.
The Board of Appeal was of the view that the phrases “narrower” and “sufficiently removed” were both open to broad and subjective interpretation (r. 3.2.1), and that there was a lack of clear guidance on how to apply the test. Furthermore, for the Board of Appeal, no test for novelty could supersede the Gold Standard test. The Gold Standard test asks what a skilled person would have derived directly and unambiguously, using common general knowledge, from the prior disclosure. The Board of Appeal therefore decided to ignore all three of the tests for the novelty of a subranges previously stipulated, and instead evaluated whether there was a direct and unambiguous disclosure of the subrange in the prior art.
The Opponent in the case argued that a skilled person would have understood, directly and unambiguously, that the prior art anticipated angle values somewhere in the middle of the disclosed range. Furthermore, it was argued that the skilled person would understand from the disclosure of e.g. “≤60°”, that a value of 59° would be the next possible and logical alternative when considering a single degree as the smallest possible difference. As such, ≤60° constituted a direct and unambiguous disclosure of 59°, and thereby directly and unambiguously anticipating the endpoints of the claimed range.
The Board of Appeal was not convinced by the Opponent’s arguments. The Board of Appeal first pointed to case law that the boundaries of a range cannot anticipate a specific value in that range (Case Law of the Boards of Appeal, I.C.4.1). For the Board of Appeal, this principle applied even when the claimed value was adjacent to the endpoints of a known range. The Board of Appeal therefore concluded that there was no direct and unambiguous disclosure of the claimed range in the prior art. The feature of 56°≤ and ≤59° was therefore found novel in view of 50°≤ and ≤60°.
The Board of Appeal was also convinced that the selected subrange was associated with a technical effect and that the claimed device was therefore inventive. Particularly, the Board of Appeal was convinced that the selected subrange represented a purposive selection based on the presence of the technical effect. The Board of Appeal rejected the Opponent’s argument that the selection was not purposive because the technical effect existed outside of the claimed range (including in the broader prior art range), on the grounds that the prior art did not disclose the presence of the technical effect itself (r.4.2.3). The claims were therefore found both novel and inventive.
Final thoughts
Establishing both novelty and inventive step on the basis of the selection of a subrange that is only a few degrees narrower than the prior art, is an impressive feat. It seems unlikely that the claim would have survived had the tests for novelty of subranges specified by the Guidelines been applied by the Board of Appeal. No matter how subjective a test, convincing a Board of Appeal that 59° is “sufficiently removed” from 60° would have been a challenge. However, it is also difficult to argue against the Board of Appeals reasoning that 59° is not “clear and unambiguous disclosure of 60°”. After all, 59 does not equal 60.
The Board of Appeal reasoning on inventive step makes interesting reading in the context of the doctrine of equivalents. The Board of Appeal in this case was perfectly happy to accept the inventiveness of the claims on the basis of a selection that was narrower than the subject matter for which the technical effect of the invention would hold true. Applying UK doctrine of equivalent analysis, however, it is hard to see how a device identical to the claimed device except for a 60° angle (i.e. outside of the claimed range but still embodying the technical effect of the invention), would not infringe under the doctrine of equivalents. However, the Board of Appeal in T 1688/20 also established that such a device would not anticipate or render obvious the claimed invention. Scenarios such as this are dealt with in German law with Formstein defence. UK judges have already observed that an equivalent of the Formstein defence may be permissible in the UK (Technetix v Teleste and Facebook v Voxer). Indeed, with decisions like T 1688/20 from the EPO Boards of Appeal, it can only be a matter of time before an equivalent defence becomes necessary to avoid English patent law becoming nonsensical.
