Part 2: Practice at the EPO vs elsewhere

Posted on June 26, 2024

In the first newsletter of the series, Simon Haslam discussed some of the differences between EPO patent law and other jurisdictions, particularly the US. In this newsletter he considers the claims, prior art rules in Europe and the assessment of inventive step.

Multiply-dependent claims are permitted in Europe without being counted multiple times for the purpose of calculating excess claims fees. It is therefore typical for European applications to contain multiply-dependent claims.

EPO practice requires that any set of claims must relate to a single invention in order for a patent to be granted. In practice, this means that a claim set can contain different independent types of claims, so long as they relate to the same invention. For example, a claim set may contain an independent apparatus claim and an independent method claim. The method claim need not be dependent on the apparatus claim, just so long as the method and apparatus claims relate to the same invention. It does not matter that the method claim could be performed by an apparatus other than the apparatus claimed in the independent device claim.

However, in a contrast to US law and practice, it is generally not permissible to have more than one independent claim in the same category or class at the EPO, although there are, as ever, exceptions to this rule. For example, the EPO will generally only allow one independent method claim or one independent apparatus claim in a claim set.

The EPO charges substantial excess claims fees starting at €275 for any claim in number over 15. Large claim sets will incur significant fees, and applicants filing smaller claim sets would do well to ensure that dependent claims relate to important technical features, especially features that are potentially inventive.

Different prior art rules
The prior art rules in Europe are slightly different from those in the US. One key difference is that a European patent application that has an earlier priority date than a claim, but that was published after the priority date of the claim can only be cited for novelty against the claim. The earlier European patent application cannot be used to attack the inventive step of the claim. Another key difference is that there is no common ownership exception for prior art. An earlier patent application either qualifies as prior art or it does not. The ownership and/or inventorship of that application is irrelevant. 

Inventive Step
As European patent attorneys, we have to provide convincing arguments as to why a claim is inventive (non-obvious) over the prior art cited by the EPO. Arguments that are limited to merely stating that features are not disclosed or suggested in the prior art are highly likely to fail at the EPO; we have to provide arguments as to why the claimed subject matter is not obvious, given what is disclosed in the prior art. In nearly all cases, the EPO uses the problem-solution approach, which is a structured way of assessing whether or not claimed subject matter is inventive. Essentially, this involves:

  • Identifying the closest prior art document;
  • Identifying the difference between the claimed subject matter and what is disclosed in the closest prior art document, this is known as the distinguishing feature;
  • identifying what problem is solved by the distinguishing feature; and
  • starting from the closest prior art document and bearing in mind the problem that is to be solved, assessing whether or not the differences are obvious, bearing in mind the documents cited by the EPO.

For example, the EPO may argue that (a) in light of document D1, there is a particular problem to be solved, (b) document D2 describes that problem and a solution to the problem, and (c) therefore a skilled person would combine the teachings of documents D1 and D2 to arrive at the subject matter of a claim without inventive effort.

While the problem-solution approach is prescriptive, it attempts to take into account the intended purposes of an earlier disclosure described in the prior art documents when deciding whether or not something is inventive. This could be said to contrast with the situation in the US, where examiners seem happy to combine the teachings of two or more documents, based on documents merely teaching that certain features are beneficial or good, without having particular regard to the reasons why those features are provided.

The problem-solution approach can also work in an applicant’s favour, for example, if you can convince the EPO that the problem is a problem that is not addressed by the cited prior art documents, in which case you may be able to argue that none of the cited documents teaches a solution to the problem, and therefore the claimed subject matter is inventive.

In any case, it is always useful for us to know why the claimed subject matter is good and why a person skilled in the art would not arrive at the claimed subject matter from the prior art cited by the EPO.

Mosaicing of multiple prior art documents to arrive at the subject matter of a claim

The EPO is far less likely than the USPTO to combine (or “mosaic”) the teaching of lots of different documents in order to make an attack on a claim on the grounds of non-inventiveness. If multiple disclosures need to be combined to arrive at the invention, that fact would typically be regarded as indicative of an inventive step.

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You can read Part 1: Practice at the EPO vs elsewhere here.

You can read Part 3: Practice at the EPO vs elsewhere here.