In situations where an invention relates to a selection of a sub-range within a larger known range of a piece of prior art EPO examiners usually apply the three criteria novelty test as outlined in the EPO Guidelines for Examination G-VI 8, item (ii) as cited below:
A sub-range selected from a broader numerical range of the prior art is considered novel, if each of the following three criteria is satisfied (see T 198/04 and T 279/89):
a. the selected sub-range is narrow compared to the known range;
b. the selected sub-range is sufficiently far removed from any specific examples disclosed in the prior art and from the end-points of the known range;
c. the selected range is not an arbitrary specimen of the prior art, i.e. not a mere embodiment of the prior art, but another invention (purposive selection, new technical teaching).
Said criteria were originally developed in the Board of Appeal decision T 198/84 in 1985 and have been applied by the EPO more than 25 years since then.
However, at least four different Boards of Appeal (Boards 3.2.06; 3.3.05, 3.3.10; 3.4.03) no longer apply criterion c. While the Board of Appeal 3.2.06 in its decision T 40/11 of July 15, 2014 points out that “it may be questioned whether the third criteria mentioned in T 198/84 has to be considered when assessing novelty”, the further cited Boards of Appeal even take the view that the purposive selection criterion c is just relevant for the question of inventive step and consequently has not to be taken into account in the assessment of novelty (see decisions T 1233/05 of April 24, 2008; T 230/07 of May 5, 2010; T 1130/09 of May 5, 2011; T 1948/10 of June 26, 2014; T 378/12 of December 8, 2016).
Said different approach may have a strong impact on the patentability of a selective invention, e.g. for those inventions which must just get the hurdle of novelty in view of prior art which is not citable under inventive step [so-called Article 54(3) EPC prior art].
Applicants having pending or new applications at the EPO and struggling with the purposive selection criterion c may take the advantage to refer to the above cited decisions in their favor. This makes in particular sense as none of said decisions has been published in the EPO’s Official Journal and may even be unknown to EPO examiners just looking up the above cited (and insofar outdated) Guidelines for Examination. In the event that neither the Examining Division (1st instance) nor the Board of Appeal (2nd instance) follows the new approach of the other above cited Boards of Appeal and still apply the purposive selection criterion c, then said case should be referred to the Enlarged Board of Appeal to ensure uniform application of the law.