GL-PCT G VII 3 Person skilled in the art

The "person skilled in the art" should be presumed to be a skilled practitioner in the relevant field of technology, who possesses average knowledge and ability and is aware of what was common general knowledge in the art at the relevant date.

GL-PCT G VII 2 Prior art; date of filing, date of priority

The "prior art" for the purposes of considering inventive step is as defined in Art. 33(3). [GL/ISPE 13.02; ]

In determining what is to be considered prior art, the principles laid down in GL/PCT‑EPO G-IV apply.

GL-PCT G VII 1 General

An invention is considered to involve an inventive step if, having regard to the prior the art, it is not obvious to a person skilled in the art. Novelty and inventive step are different criteria. The question of whether there is inventive step only arises if the invention is novel.[Art. 33(3); GL/ISPE 13.01; ]

GL-PCT G VII – Inventive step

1. General

2. Prior art; date of filing, date of priority

3. Person skilled in the art

4. Obviousness

5. Problem‑solution approach

GL-PCT G VI 9 Novelty of "reach-through" claims

"Reach-through" claims are defined as claims attempting to obtain protection for a chemical product (and also uses thereof, compositions thereof, etc.) by defining that product functionally in terms of its action (e.g. agonist, antagonist) on a biological target such as an enzyme or receptor. In many such cases, the applicant functionally defines chemical compounds in this way by reference to a newly identified biological target.

GL-PCT G VI 8 Selection inventions

Selection inventions deal with the selection of individual elements, subsets, or subranges, which have not been explicitly mentioned, within a larger known set or range. The examiner of the EPO as IPEA will assess the novelty of the subject-matter according to the principles laid down in GL/EPO G‑VI, 8 and subsection.[GL/ISPE 12.10; ]

GL-PCT G VI 7.2 Second non‑medical use

A claim to the use of a known compound for a particular purpose (second non-medical use) which is based on a technical effect will be interpreted by the EPO examiner as including that technical effect as a functional technical feature. The novelty of the use of the known compound for the known production of a known product cannot be deduced from a new property of the produced product. In such a case, the use of a compound for the production of a product will be interpreted as a process for production of the product with the compound.

GL-PCT G VI 7.1 Second or further medical use of known pharmaceutical products

How the novelty of second or further medical use claims is assessed depends on the IPEA. The examiner at the EPO as IPEA examines the novelty of the subject-matter in view of the entry into the regional phase before the EPO and therefore will apply the principles as laid down in GL/EPO G‑VI, 7.1 and subsections. See GL/PCT‑EPO B‑VIII, 2.1, for the treatment of medical use claims by the EPO as ISA.

GL-PCT G VI 7 Examination of novelty

In determining novelty of the subject-matter of claims, the examiner should remember that, particularly for claims directed to a physical entity, non-distinctive characteristics of a particular intended use should be disregarded. For example, a claim to a substance X for use as a catalyst would not be considered to be novel over the same substance known as a dye, unless the use referred to implies a particular form of the substance (e.g. the presence of certain additives) which distinguishes it from the known form of the substance.

GL-PCT G VI 6 Implicit disclosure and parameters

In the case of a prior document, the lack of novelty may be apparent from what is explicitly stated in the document itself. Alternatively, it may be implicit in the sense that, in carrying out the teaching of the prior document, the skilled person would inevitably arrive at a result falling within the terms of the claim. An objection of lack of novelty of this kind should be raised by the examiner only where there can be no reasonable doubt as to the practical effect of the prior teaching.