8.1. Novelty criteria for use claims and process claims containing a purpose feature
8.1.1 General issues decided before the Enlarged Board
In general, the EPC allows both method claims and use claims, but whether an activity is claimed as a method of carrying out the activity (setting out a sequence of steps) or as the use of a thing for a stated purpose (the sequence of steps being implied) is a matter of preference. For the Enlarged Board there is no difference of substance (G 5/83, OJ 1985, 64).
The Enlarged Board dealt in detail with the novelty of second non-medical uses in G 2/88 (OJ 1990, 93) and G 6/88 (OJ 1990, 114). The questions referred to it concerned use claims, i.e. claims defining a "use of compound X for a particular purpose", or similar wording, where the only novel feature was the purpose of that use. They were not about medical inventions but were of a general nature and primarily concerned interpretation of Art. 54(1) and (2) EPC 1973. The patentability of a second non-medical use of a product had already been recognised in principle in G 5/83 (OJ 1985, 64), which concerned the second medical use of a substance.
In the non-medical field use claims are admissible and not subject to special conditions.
In G 2/88 (OJ 1990, 93) and G 6/88 (OJ 1990, 114), the Enlarged Board had to decide whether a claim for the use of a compound for a particular non-medical purpose was novel under Art. 54 EPC 1973, having regard to a prior publication which disclosed the use of that compound for a different non-medical purpose, so that the only novel feature in the claims was the purpose for which the compound was used. The specific problem in these cases was that the previously disclosed use of the substance, although specifically stated to be for another purpose, would inherently comprise the use as claimed in the new application (T 59/87 date: 1988-04-26, OJ 1988, 347; T 208/88 of 20 July 1988 date: 1988-07-20).
The Enlarged Board cited T 231/85 (OJ 1989, 74), a case concerning an application for use as a fungicide of a compound already disclosed in the prior art as a growth regulator. The use according to the claimed invention and the use disclosed in the prior art were both carried out in the same way (i.e. the means of realisation was the same, namely the spraying of useful plants). The board had nevertheless concluded that the claimed invention was novel because the technical teaching in the application differed from that in the citation, and that, even if means of realisation was the same, the use was not yet known.
In G 2/88 and G 6/88, therefore, it was pointed out that a claimed invention lacked novelty unless it included at least one essential technical feature which distinguished it from the state of the art. A basic initial consideration, when deciding upon the novelty of a claim, was therefore to analyse it in order to determine its technical features. The Enlarged Board took the view that the proper interpretation of a claim whose wording clearly defined a new use of a known compound would normally be such that the attaining of a new technical effect on which the new use was based was a technical feature of the claimed invention. Thus, where the particular technical effect underlying such use was described in the patent, the proper interpretation of that claim would require a functional feature to be implicitly contained in the claim as a technical feature – e.g. the compound actually achieved the particular effect.
The Enlarged Board thus concluded that, with respect to a claim to a new use of a known compound, such new use might reflect a newly discovered technical effect described in the patent. The attaining of such a technical effect should then be considered as a functional technical feature of the claim (e.g. the achievement in a particular context of that technical effect). Had that technical feature not previously been made available to the public by any of the means set out in Art. 54(2) EPC 1973, then the claimed invention was novel, even though such technical effect might have inherently taken place in the course of carrying out what had previously been made available to the public. The final decisions in cases T 59/87 date: 1990-08-14 (OJ 1991, 561) and T 208/88 date: 1990-02-28 (OJ 1992, 22) both held that the claimed use inventions were novel and inventive.
In T 1385/15, the board considered that the legal interpretation in the contested decision was not in line with G 6/88 itself, which stated, in point 8 of the Reasons, that, for a finding of lack of novelty, all the technical features of the claimed invention had to have been made publicly available together. Summing up, G 6/88 had held that the functional technical feature conferring novelty could lie in achieving a technical effect in a particular context. Thus, in the case at issue, the functional technical feature was the anti-microbial activity in the context of the claimed mechanical disinfection of articles. This feature was not disclosed in the prior art. A claim directed to a further non-medical use could not be found to lack novelty if the prior art did not disclose the claimed technical effect of the substance and the claimed use in combination.
In T 1099/16 the board held that in order to decide whether a claim to the use of a known compound for a particular purpose, based on a technical effect which is described in the patent, should be interpreted as including that technical effect as a functional technical feature according to G 2/88, it is not a requirement that the technical effect is described in the patent in a manner sufficiently clear and complete to make the actual achievement of that technical effect credible.
- T 2387/22
In T 2387/22 claim 1 according to auxiliary requests 9 to 11 defined the use of a Vacuum Metallised Pigment (VMP) in a flexographic ink formulation for providing the following technical effects: "fewer print defects, higher hiding and stronger colour and allowing a lower volume anilox". The respondent (patent proprietor) submitted that according to G 2/88, when a use claim defined technical purposes or effects, these were to be interpreted as functional features restricting the scope of protection.
According to the appellant (opponent) these functional features did not meet the requirement of clarity under Art. 84 EPC, since they were defined using relative terms as well as diffusely defined concepts. The respondent replied that it was a well-established practice of the boards to allow the definition of effects or purposes in non-medical use claims using broad and/or relative terms.
The board observed that there was no basis – be it in the case law or in the EPC – for concluding that the limiting functional features of a use claim are exempt from the clarity requirement under Art. 84 EPC or somehow exposed to lower standards in this respect. It however emphasised that – irrespective of whether a claim was directed to a use or to any other category of subject-matter – the mere breadth of protection did not in itself imply a lack of clarity. The decisive consideration was whether the feature(s) in question gave(s) rise, or could plausibly give rise, to legal uncertainty when assessing whether a particular subject-matter falls within or outside the scope of protection conferred by the claim.
Moreover, the board stated that, where the invention was based on the discovery of a new technical effect of a known entity (as in G 2/88 and G 6/88), it was generally accepted in practice to define that effect in correspondingly broad terms, provided the effect was sufficiently distinct to clearly delimit the scope of protection with respect to the prior art. The situation in the present case was, however, fundamentally different. The use claim did not seek to define distinct technical effects, but rather relative improvements in the achievement of such effects..
The board held that where a claimed invention is defined by the use of a known entity to achieve a known technical effect or purpose, and the alleged technical contribution lies in a relative improvement or enhancement of that effect or purpose, the requirement of clarity under Art. 84 EPC generally demands that the feature defining such relative improvement or enhancement be expressed in objectively verifiable terms, thereby ensuring legal certainty regarding the scope of protection. In these "relative-improvement" scenarios, any imprecise functional language could blur the distinction between claimed and known uses, giving rise to the very legal uncertainty that the clarity requirement is intended to prevent.
In the present case, the board concluded that no objective criteria were available for determining when the number of print defects, the degree of hiding, the colour intensity or the anilox volume could be regarded as sufficiently low or high for other uses to fall within or outside the scope of the claim. As a result, the subject-matter of claim 1 could not be assessed objectively in relation to the prior art, which gave rise to legal uncertainty and therefore failed to meet the clarity requirement of Art. 84 EPC.