4. Determining the content of the relevant prior art
Overview
4. Determining the content of the relevant prior art
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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 1599/18
Lack of novelty (see point 14): there is no need that a prior art document explicitly mentions the claimed features. It is necessary and sufficient that an embodiment falling under the claim scope be directly and unambiguously derivable from the prior art document. That an alternative exists does not change this: it is possible that multiple alternatives can be considered directly und unambiguously derivable, even when none is explicitly mentioned. Right to be heard (see points 18 and 29): the right to be heard does not entail a right to an amendment, but a right to present comments on why a specific request should be admitted to the proceedings.
- T 2117/17
a) Besonders strenge Bedingungen sind an ein verspätetes Vorbringen einer offenkundigen Vorbenutzung geknüpft, insbesondere dann, wenn die Vorbenutzung durch die Verfahrensbeteiligten selbst erfolgt sein soll. Gerade in einem solchen Fall wäre von der Einsprechenden zu erwarten gewesen, Informationen über die eigenen Produkte schon vor der Einspruchsabteilung vorzubringen, um eine Zurückverweisung zu vermeiden (Punkt 4.2.8).
b) Obwohl zwar die Verfahrensschritte als solche in einem Vorrichtungsanspruch nicht unmittelbar Teil des Schutzumfangs sind, versteht die Fachperson aber, dass die Vorrichtung dazu eingerichtet sein muss, die Verfahrensschritte auszuführen (Punkt 5.2.3).
- T 1657/14
see Reasons - points 2.4.3 and 2.4.5
- Case law 2019
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The patent at issue in T 1456/14 was for a vacuum cleaner with a filter and its claim 1 was directed to the proportion of total length to area. That no total length was disclosed in the cited prior-art document D14 was, the board held, irrelevant for the purposes of assessing novelty if it could be demonstrated that it undoubtedly covered the claimed proportion nonetheless. To do so, it sufficed to show that even a smaller numerical value necessarily exceeded by the prior-art device would be in keeping with the claimed proportion, as this meant the prior-art document definitely had to encompass that proportion too. Whether a known device had an implicit (or even explicit) feature did not depend on whether or not the skilled person's attention was likely to be drawn to precisely that feature but on whether, from a purely objective perspective, it had to have that feature. For the criterion of "direct and unambiguous disclosure" to be met, it was not essential that the skilled person would realise the feature was included even without knowing about the patent. EPO departments were to examine disclosure with the eyes and understanding of the skilled person, but that did not mean they did not do so purposively, in full knowledge of the feature they were looking for. Such an approach did not amount to an impermissible consideration of equivalents.