4.1. General rules of interpretation

Determining the information content means interpreting what comprises the state of the art. The boards have established certain principles to be observed in this process.

According to the boards' settled case law, the technical disclosure in a prior art document must be considered as a whole (see T 56/87, OJ 1990, 188). The individual sections of a document cannot be considered in isolation from the others but must be seen in their overall context (T 312/94, T 452/05, T 456/10). In T 1321/04 the board found that the terms used in patent documents should be given their normal meaning in the relevant art, unless the description gave the terms a special meaning. The patent document might be its own dictionary (T 523/00, T 311/93). Thus, if a special meaning could be derived from the patent document, only this meaning was ultimately decisive.

In T 312/94 the board held that for the interpretation of any document, in particular a patent application or patent, in order to determine its true meaning and thus its content and disclosure, no part of such a document should be construed in isolation from the remainder of the document: on the contrary, each part of such a document had to be construed in the context of the contents of the document as a whole. Thus, even though a part of a document appeared to have a particular meaning when interpreted literally and in isolation from the remainder of the document, the true meaning of that part of the document could be different having regard to the remainder of the document (see also T 546/07, T 860/06, T 456/10).

According to established case law, it is a prerequisite for the acceptance of lack of novelty that the claimed subject-matter is "directly and unambiguously derivable from the prior art". In other words, it has to be "beyond doubt – not merely probable – that the claimed subject-matter was directly and unambiguously disclosed in a patent document" (T 450/89, T 677/91, T 988/95, T 1029/96, T 218/00). This also means that the novelty of the claimed subject-matter over a prior art document cannot be opposed only on the basis of equivalents to the features directly and unambiguously disclosed in the cited document (T 167/84, OJ 1987, 369; T 928/93, T 1387/06).

In T 2201/10 the board found that the "photographic" approach to assessing novelty developed in the case law required that the prior art actually disclose the claimed features, be it explicitly or implicitly, in order for it to be found that the claimed subject-matter lacked novelty. The mere fact that information in the prior art did not rule out the feature in question was not enough to establish that it had already been disclosed. In other words, general information could not anticipate a more specific technical feature.

In T 410/99 the board added that a prior art disclosure was novelty‑destroying if it disclosed directly and unambiguously the subject-matter in question, account also being taken of a skilled person's common general knowledge at the publication date of the cited document in the case of prior art cited under Art. 54(2) EPC 1973, or at the priority date of the cited document in the case of an Art. 54(3) EPC 1973 document (see e.g. T 511/92, T 412/91).

In T 2397/11 the objection of lack of novelty based on prior art D1 failed. The board noted that it was a generally applied principle for concluding lack of novelty that there must be a direct and unambiguous disclosure in the state of the art which would inevitably lead to subject-matter falling within the scope of the claim. Where gaps in experimental detail exist, these may be filled by the skilled person with his common general knowledge using conventional techniques within reasonable limits, provided that the choices made are not material to the end results (see, for example, T 1753/06, in particular, points 4.11, 4.13, 4.16.1 and 4.17 of the Reasons).

In T 412/91 the board decided that a prior art disclosure had to be read giving the information it contained the meaning that a skilled person would have given it at its publication date and disregarding information which would be understood by a skilled person to be wrong; however, any teaching which would not be recognised as wrong by a skilled person had to be accepted as state of the art.

In T 546/07 the board found that the skilled person reading a document did not construe individual points of the disclosure in isolation, but rather in the context of the document as a whole (T 312/94, T 860/06).

In T 1849/08 the board stated that what was decisive for the information content of a prior art document was what a person skilled in the art reading the document would understand from it. If a skilled reader of a prior art document containing an isolated statement that a diagram in a figure was "not to scale" could find nothing in the figure itself or in the rest of the document supporting this statement, he would consider the statement to be made in error and disregard it.

It is a well-established principle laid down by the boards' case law that a non-specific definition in a claim should be given its broadest technically sensible meaning (see T 79/96, T 596/96).

In T 969/92 the board decided that, in order to determine what had been made available to the public, not only the main claim but also the remainder of a patent document had to be carefully considered for guidance as to what had really been taught in the prior document, i.e. its real express and implicit information content.

The board in T 1658/12 stated that, in determining what is made available to the public within the meaning of Art. 54(2) EPC by a prior art patent document, it must be borne in mind that it is the description which chiefly serves to disclose the invention in a manner that it may be carried out, whereas the chief function of the claims is to define the subject-matter for which protection is sought. Where a combination of features is found only in the claims (or only in the claims and a "Summary of the Invention" which merely recites the features of the claims), it must be very carefully considered whether this combination truly corresponds to the technical teaching of the document as it would be understood by a skilled person, or whether it is merely an artefact of the claim drafting process aimed at obtaining maximal scope of protection (see point 3.8 of the Reasons; also T 312/94, Catchword; T 969/92, point 3 of the Reasons, and in particular, page 4, first paragraph; T 42/92, "Orientierungssatz").

In T 2020/13 the board stated that where a technical term such as a trade name is known to have changed, this circumstance is to be taken into account in order to attribute to that technical term its proper meaning and to understand the technical teaching meant to be conveyed by the prior art document (see abstract of this decision in this chapter I.C.3.2.1 h).

According to decision T 158/96, the information in a citation that a medicament was undergoing a clinical phase evaluation for a specific therapeutic application was not prejudicial to the novelty of a claim directed to the same therapeutic application of the same medicament, if such information was plausibly contradicted by the circumstances, and if the content of said citation did not allow any conclusion to be drawn with regard to the actual existence of a therapeutic effect or any pharmacological effect which directly and unambiguously underlay the claimed therapeutic application (see also T 385/07, T 715/03, T 1859/08).

In T 1859/08 the board first observed that independent claims 1 and 10 were in the form of medical use claims, the novelty of which was derived from the intended medical use. As a consequence, all the technical features of the therapeutic indication specified in the claims had to be taken into account when considering whether or not the claimed subject‑matter was novel. The board noted that prior art document D1 did not involve humans, whereas the claims before the board were directed to the treatment of breast cancer in a human patient. Further, D1 stated that the combination therapy disclosed in the study was "currently being explored". The board held that a mere statement that a combination therapy was being explored did not amount to a novelty-destroying disclosure. The "currently being explored" situation, where no clinical benefit was disclosed, fell within the rationale of decisions T 158/96 and T 715/03. According to these decisions, if a prior art document disclosed clinical investigations such as phase I, II or III studies (or stated that these investigations were ongoing), but failed to disclose the final result of these studies, it was not novelty-destroying. The board concluded that there was no description in the prior art documents of the treatment of a human patient, nor any disclosure of the biological effect. Therefore, the claims satisfied the requirements of Art. 54 EPC.

In T 943/93 the board held that a hypothetical possibility of operating within the claimed area was not per se sufficient in law to deprive this area of novelty, particularly if the skilled person had no technical motive and thus no practical necessity to work within this region (see also T 892/05).

Decisive for novelty in T 464/94 was a citation disclosing a preliminary test to transform plant protoplasts with selective markers. The opposition division had considered it probable that this document anticipated the patent in dispute. In the board's view, it was not justifiable to decide whether a document was prejudicial to novelty on the basis of probability. When a patent was revoked for lack of novelty, the department concerned had to be sure, having taken all the facts and arguments put forward during the proceedings into consideration, that the revocation was justified (see also T 892/05).

In T 233/90 the board took the view that in a case where a document comprised in the state of the art under Art. 54(3) EPC 1973 referred to "a usual manner" of preparing a product, it was permissible to use documents of reference such as handbooks, encyclopaedias or dictionaries in order to determine what the skilled person would have understood by such a reference on the effective date of the prior document.

In T 4/00 the board held that the points of a graph in a diagram in a prior art document did not represent a disclosure of the corresponding values read from the scales of the diagram, if the accuracy of the graph in the diagram could not be established.

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