Guidelines amended to clarify the practice relating to the novelty assessment of selection inventions
Further to our earlier post, the finally amended Guidelines for Examination at the EPO 2024 have been published here and are in force as of 1 March 2024. The amendments include a modification of the section on the novelty assessment of selection inventions (Part G, Chapter VI, 7). The Guidelines now define that selection inventions deal with the selection of individual elements, subsets, or sub-ranges, from a more generic disclosure in the prior art.
According to the amended Guidelines, the novelty assessment of selection inventions is considered based on the number of selections identified compared with the prior art, whereby a distinction is made based on the identification of one or multiple selections.
When the selection concerns one single selection, two situations may arise depending on the type of selection:
(a) The selection is a selection of individual elements or of subsets of a larger set, whereby the selection of one or more elements from a single list of specifically disclosed elements does not confer novelty.
(b) The selection is a selection of a sub-range selected from a broader numerical range disclosed in the prior art, whereby a claimed selection of a sub-range is not considered novel if any specific value disclosed in the prior art falls within the claimed range, irrespective of whether the value stems from a concrete example or is disclosed as the endpoint of a range. In line with previous practice, a sub-range selected from a broader numerical range of the prior art is considered novel if both of the following two conditions are fulfilled:
- the selected sub-range is narrow compared to the known range; and
- the selected sub-range is sufficiently far removed from any specific examples disclosed in the prior art.
Two examples are added to the Guidelines to illustrate this: the first example relates to a selection of a sub-range from a broader numerical range, another example relates to a Markush formula.
When the selections concern multiple selections, three situations may arise varying the type of selections:
(a) The identified selections lie in the selection of individual elements or in the selection of subsets of multiple larger sets. This amounts to a selection from two or more lists of a certain length. A list is defined as a description of equal, i.e. non-convergent, alternatives. If a selection from two or more lists of a certain length has to be made to arrive at a specific combination of features, then the resulting combination of features, not specifically disclosed in the prior art, confers novelty. This principle is also referred to as the “two-list principle”. Examples of selections from two lists are provided.
(b) The identified selections lie in the selection of multiple sub-ranges from broader numerical ranges. A sub-range is a range that either lies completely inside the prior-art range or overlaps with an endpoint of the prior-art range, thereby creating a range of overlap with the prior-art range. The two-list principle mentioned above applies in the same way here. In contrast to the situation involving a single selection, it is not sufficient that, for each claimed sub-range taken individually, the prior art discloses a specific value or a range endpoint falling within said sub-range to anticipate the subject-matter of the claim. That is, the selection of multiple sub-ranges will, in the absence of any pointers to the combination of the specific sub-ranges, be novel over the broader ranges. The Guidelines provide an example.
(c) The identified selections lie in a combination of selections from lists and sub-ranges. In this case, the principles described above under (a) and (b) apply.
The structured approach for the novelty assessment of selection inventions based on the identification of one or multiple selections and the nature of the selection as provided by the latest Guidelines is welcomed and adequately illustrated by examples.
When confronted with selection inventions, our experienced team of European patent attorneys at De Clercq & Partners can help you with prior art assessment and select the most suitable ways to protect your invention. Please reach out to us at info@dcp-ip.com.
