LLM PATENT Week3 Lecture Notes

University of Liverpool
Patent Law Week 3: Novelty This week focuses on the concept of novelty in patent law, including the process of examining prior art. What is the invention? Textbook reading: Bently, L. & Sherman, B. (2009) Intellectual property law. 3rd ed. Oxford: Oxford University Press, Chapter 18 1. Introduction 2. What is the invention? Supplemental Resources: IPO Practice Notes: http://www.ipo.gov.uk/practice-sec-002.pdf. EPO Guidelines for Examination re Novelty: http://www.epo.org/patents/law/legaltexts/html/guiex/e/c_iv_9.htm. Booton, D.L. (1996) Novelty of inventions under the Patents Act 1977 and the European Patent Convention. 2 Web JCLI [Online]. Available from: http://webjcli.ncl.ac.uk/1996/issue2/booton2.html. Both the Patents Act 1977 and the EPC 2000 require that an invention be new to be patentable. PA 1977 section 1 (1):
Patentable inventions 1.-(1) A patent may be granted only for an invention in respect of which the following conditions are satisfied, that is to say (a) the invention is new; [Bold added.]
(pp. 464466) (p. 466)
EPC 2000 Article 52 (1):

Article 52
Patentable inventions (1) European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application. [Bold added.]
To be new the invention must include an aspect not available in the current state of the art.
Patent Law 1/12 CopyrightLaureate Online Education All rights reserved, 2010. The Module, in all its parts: Syllabus, guidelines, lectures, Discussion questions, technical notes, images and any additional material is copyrighted by Laureate Online Education B.V. Last update: November 2010
PA 1977 section 2:
Novelty 2.(1) An invention shall be taken to be new if it does not form part of the state of the art. (2) The state of the art in the case of an invention shall be taken to comprise all matter (whether a product, a process, information about either, or anything else) which has at any time before the priority date of that invention been made available to the public (whether in the United Kingdom or elsewhere) by written or oral description, by use or in any other way. (3) The state of the art in the case of an invention to which an application for a patent or a patent relates shall be taken also to comprise matter contained in an application for another patent which was published on or after the priority date of that invention, if the following conditions are satisfied, that is to say (a) that matter was contained in the application for that other patent both as filed and as published; and (b) the priority date of that matter is earlier than that of the invention. (4) For the purposes of this section the disclosure of matter constituting an invention shall be disregarded in the case of a patent or an application for a patent if occurring later than the beginning of the period of six months immediately preceding the date of filing the application for the patent and either (a) the disclosure was due to, or made in consequence of, the matter having been obtained unlawfully or in breach of confidence by any person (i) from the inventor or from any other person to whom the matter was made available in confidence by the inventor or who obtained it from the inventor because he or the inventor believed that he was entitled to obtain it; or (ii) from any other person to whom the matter was made available in confidence by any person mentioned in sub-paragraph (i) above or in this sub-paragraph or who obtained it from any person so mentioned because he or the person from whom he obtained it believed that he was entitled to obtain it; (b) the disclosure was made in breach of confidence by any person who obtained the matter in confidence from the inventor or from any other person to whom it was made available, or who obtained it, from the inventor; or (c) the disclosure was due to, or made in consequence of the inventor displaying the invention at an international exhibition and the applicant states, on filing the application, that the invention has been so displayed and also, within the prescribed period, files written evidence in support of the statement complying with any prescribed conditions. (5) In this section references to the inventor include references to any proprietor of the invention for the time being. [Bold added.]
EPC 2000 Article 54:

Article 54
Novelty (1) An invention shall be considered to be new if it does not form part of the state of the art. (2) The state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application.
(3) Additionally, the content of European patent applications as filed, the dates of filing of which are prior to the date referred to in paragraph 2 and which were published on or after that date, shall be considered as comprised in the state of the art. (4) Paragraphs 2 and 3 shall not exclude the patentability of any substance or composition, comprised in the state of the art, for use in a method referred to in Article 53(c), provided that its use for any such method is not comprised in the state of the art. (5 Paragraphs 2 and 3 shall also not exclude the patentability of any substance or composition referred to in paragraph 4 for any specific use in a method referred to in Article 53(c), provided that such use is not comprised in the state of the art. [Bold added.]
Note that EPC Article 53 (c) is:

Article 53
Exceptions to patentability (c) methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body; this provision shall not apply to products, in particular substances or compositions, for use in any of these methods.
Originally (prior to the 1642 Statute of Monopolies), patents did not have to be new to be granted a monopoly by the Crown. This meant that the grant of a patent could stop people doing what they had already done before the patent was granteda very unsatisfactory state of affairs for those who lost their livelihoods in the process. Thus one of the reasons that has been given for the introduction of a requirement of newness (or novelty) to patent law is the right to work argument. This was articulated in Windsurfing International1, where Oliver LJ stated that:
the notion behind anticipation is...that it would be wrong to enable the patentee to prevent a man from doing what he has lawfully done before.
Both the PA 1977 and the EPC operate on the principal of objective novelty in an attempt to avoid subjective judgements which might lead to uncertainty (although pre-1977 the UK used a different standard; see B&S at p465 note 9). In pursuit of this principle, both UK and European patent law have adopted the principle of
Windsurfing International Inc. v Tabur Marine (GB) Ltd. [1985] RPC 59. [Note that your textbook contains an incorrect date at p. 465, note 5.] In this case, the plaintiff was the manufacturer of the first commercial windsurfer/sailboard and patented their design for sailboard with a Bermuda rig and a wishbone spar in the United Kingdom and elsewhere. They then sued another company for patent infringement as a result of making and selling a similar sailboard in the UK. The validity of a patent can be challenged by an alleged infringer, and Tabur Marine based their challenge on the fact that in 1958, at least 10 years before the grant of the patent, a 12-year-old boy called Peter Chilver had built an early version of a sailboard, which was evidenced by film footage taken off the coast of Hayling Island. They alleged that this proved that the subject of the plaintiffs' patent had been anticipated. The Court upheld Tabur Marine's claim that the boy's invention predated the plaintiff's application for a UK patent and the patent was rendered invalid notwithstanding that Chilver's sailboard was of a slightly different design.
absolute novelty2, such that the novelty of an invention is judged against all the information which is available at the priority date of the information: PA 1977 Section 2 (2):
2 (2) The state of the art in the case of an invention shall be taken to comprise all matter (whether a product, a process, information about either, or anything else) which has at any time before the priority date of that invention been made available to the public (whether in the United Kingdom or elsewhere) by written or oral description, by use or in any other way. [Bold added.]
EPC 2000 Article 54 (2)

(2) The state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application. [Bold added.]
In their introduction to the concept of novelty, Bently and Sherman point out that the task of determining whether the invention is novel can be conveniently broken down into three separate questions. These are:
What is the invention? As Hoffman LJ noted in Merrrell Dow v Norton:3

Before coming to the question of whether the invention was new, one must first be clear about what it [the invention] was.
What information is disclosed by the prior art? [see next section] and In the light of the answers to the above two questions is the invention novel? In other words, is the invention part of the state of the art?
What information is disclosed by the prior art? Textbook reading: Bently, L. & Sherman, B. (2009) Intellectual property law. 3rd ed. Oxford: Oxford University Press, Chapter 18. 3. What information is disclosed by the prior art? (pp. 466-471)
As noted above, the task of determining whether the invention is novel can be conveniently broken down into three separate questions. After deciding what exactly the invention is, the second task is to determine:
What information is disclosed by the prior art? This question can be broken down into stages:
Convention on the Unification of Certain Points of Substantive Law on Patents for Invention, Strasbourg, 27.XI.1963, Article 4. See: http://conventions.coe.int/treaty/en/Treaties/Html/047.htm 3 Merrell Dow Pharmaceuticals Inc. v. H.N. Norton & Co. Ltd. [1996] RPC 76 (HL) at 82 [Online]. Available from: http://www.law.uvic.ca/manson/366/course_materials_pass/documents/366MerrellDow.pdf. See detailed discussion in Booton (1996) at http://webjcli.ncl.ac.uk/1996/issue2/booton2.html.
o o o
Determine what materials form part of the state of the art. Identify the relevant materials. Determine the nature of the information (or teaching) which is disclosed by the prior art.
The state of the art [PA 1977 s2(2)]:

Is defined broadly: all matter (whether a product, a process, information about either, or anything else) Is not limited to recent disclosures: which has at any time before the priority date of that invention been made available to the public Has no geographical limits: been made available to the public (whether in the United Kingdom or elsewhere). Has no restrictions on the mode of disclosure: has been made available to the public [] by written or oral description, by use or in any other way. Here it is potential availability to the public that counts, rather than whether any member of the public took advantage of that opportunity. Information can become part of the state of the art as a result of:
o o o o o o o
Previously published patents Journal articles Past uses Exhibitions Sales (the sale of a single item will be sufficient) Written or oral communications Communications in any language
Read the relevant part of Bently and Sherman for a discussion of relevant cases. Other points to note about materials included in the state of the art are that:
In the United Kingdom and Europe, novelty is assessed at the priority date (usually the date of filing the applicationsee Bently and Sherman for discussion of this point), giving those countries a first to file patent regime. By contrast, the U.S, has a first to invent regime. Patent applications published after the priority date are also included in materials which form part of the state of the art, where such applications have an earlier priority date. This takes account of the time lag between application for, and granting of, a patent. This exception to the priority date cutoff avoids the possibility of double patenting. Materials disclosed before the priority date but specifically excluded from the state of the art are:
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Information obtained unlawfully or disclosed as a result of a breach of confidence Information disclosed due to, or made in consequence of, the inventor displaying the invention at an international exhibition. [PA s2(4)(c); EPC 2000 Art 55(1)(b)]
These exclusions operate for a limited period. [See Bently and Sherman for details.] The information disclosed by the prior art is restricted to the information that a person skilled in the art is able to derive from the prior art in question. Relevant prior art may be in two main forms:

Prior art disclosed by way of documents (e.g., journal article, product advertisement, instruction manual). Prior art disclosed by way of product (e.g., drug or machine released to the market). In some cases it may make a difference whether the public has been able to touch and use the item, or only to look at it.4
The rules for interpreting documents and products to determine whether they constitute prior art are discussed in Bently and Sherman at Section 3.2. Is the invention novel? Textbook reading: Bently, L. & Sherman, B. (2009) Intellectual property law. 3rd ed. Oxford: Oxford University Press, Chapter 18. 4. Is the invention novel? (pp. 471478)
Once the invention in an application has been identified, and the nature of the information (or teaching) which is disclosed by the prior art determined, it is possible to determine whether the invention has been anticipated by the prior art or whether it is novel. In the IPO Manual of Patent Practice5 Section 2 Novelty6 the IPO note that:
An invention defined in a claim lacks novelty if the specified combination of features has already been anticipated in a previous disclosure. In SmithKline Beecham Plcs (Paratoxetine
In Lux Traffic Controls Ltd v Pike Signals Ltd and Faronwise Ltd, [1993] RPC 107, Aldous J recognised that what was made available to the public often differed according to whether the public had an article in their possession to handle, measure, and test or whether they could merely look at it. 5 Index for the manual available from: http://www.ipo.gov.uk/pro-types/pro-patent/p-law/p-manual/pmanual-practice/p-manual-practice-pat1977.htm. 6 Available from: http://www.ipo.gov.uk/practice-sec-002.pdf (as at July 2010).
Methanesulfonate) Patent [2006] RPC 10, the House of Lords held there were two requirements for anticipation: prior disclosure and enablement. These are distinct concepts, each of which has to be satisfied and each of which has its own rules.
Prior disclosure (see IPO Manual at 2.03 to 2.09).
To constitute a prior disclosure of a patent, the matter relied upon as prior art must disclose subject matter which, if performed, would necessarily result in infringement of the patent. Thus:
If the prior inventor's publication contains a clear description of, or clear instructions to do or make, something that would infringe the patentee's claim if carried out after the grant of the patentee's patent, the patentee's claim will have been shown to lack the necessary novelty, that is to say, it will have been anticipated. The prior inventor, however, and the patentee may have approached the same device from different starting points and may for this reason, or it may be for other reasons, have so described their devices that it cannot be immediately discerned from a reading of the language which they have respectively used that they have discovered in truth the same device; but if carrying out the directions contained in the prior inventor's publication will inevitably result in something being made or done which, if the patentee's patent were valid, would constitute an infringement of the patentee's claim, this circumstance demonstrates that the 8 patentee's claim has in fact been anticipated.
Enablement (see IPO Manual at 2.10). Here, the person skilled in the art is enabled by the disclosure (and such trial and error experiments as would be reasonable for such a skilled person to make) to work the disclosed invention.
In Synthon BV v SmithKline Beecham, Lord Hoffmann emphasised that the two requirements of disclosure and enablement should be kept distinct, particularly in relation to the role of the person skilled in the art:
32. Likewise, the role of the person skilled in the art is different in relation to disclosure and enablement. In the case of disclosure, when the matter relied upon as prior art consists (as in this case) of a written description, the skilled person is taken to be trying to understand what the author of the description meant. His common general knowledge forms the background to an exercise in construction of the kind recently discussed by this House in Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2005] RPC 9. And of course the patent itself must be construed on similar principles. But once the meanings of the prior disclosure and the patent have been determined, the disclosure is either of an invention which, if performed, would infringe the patent, or it is not. The person skilled in the art has no further part to play. For the purpose of enablement, however, the question is no longer what the skilled person would think the disclosure meant but whether he would be able to work the invention which the court has held it to disclose. 33. There is also a danger of confusion in a case like Merrell Dow Pharmaceuticals Inc v H N Norton & Co Ltd [1996] RPC 76, in which the subject-matter disclosed in the prior art is not the same as the claimed invention but will, if performed, necessarily infringe. To satisfy the requirement of disclosure, it must be shown that there will necessarily be infringement of the patented invention. But the invention which must be enabled is the one disclosed by the prior art. It makes no sense to inquire as to whether the prior disclosure enables the skilled person to
. Note that this case is also cited as Synthon BV v SmithKline Beecham [2005} UKHL 59. Available from: http://www.publications.parliament.uk/pa/ld200506/ldjudgmt/jd051020/synth.pdf. 8 General Tire & Rubber Company v Firestone Tyre & Rubber Company Limited, [1972] RPC 457, at pages 4856.
perform the patented invention, since ex hypothesi in such a case the skilled person will not even realise that he is doing so. Thus in Merrell Dow the question of enablement turned on whether the disclosure enabled the skilled man to make terfenadine and feed it to hay-fever sufferers, not on whether it enabled him to make the acid metabolite.
Note that, following Synthon BV v SmithKline Beecham, it is clear that there are two requirements for anticipation: prior disclosure and enablement, each of which has to be satisfied and each of which has its own rules. Two further issues arise:
Secret or inherent use. This occurs where something is created, either accidentally or as an unknown by-product of some process, without the public knowing of its use (as in Merrell Dow, discussed above in Synthon). Product-by-process claims. The IPO manual discusses this at 2.15:
In considering so-called product-by-process claims, Lord Hoffmann in Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2005] RPC 9 held that it was important that the United Kingdom should apply the same law as the EPO when deciding what counted as new for the purposes of the European Patent Convention. A claim to a product obtained by a process e.g. Product X obtained by process Y should therefore be construed as a claim to the product as such, irrespective of whether the term obtained, obtainable, directly obtained or an equivalent wording is used (see EPO Decision T 150/82 International Flavors and Fragrances Inc. [1984] 7 OJEPO 309). A product-by-process claim is therefore not rendered novel merely by the fact it is produced by means of a new process. Furthermore, the House of Lords held that the protection conferred by a process claim should extend to products directly obtained by the process in accordance with EPC Article 64(2).
Read Bently and Sherman on these points, as well as the rest of the relevant sections in the IPO and EPO manuals. An old thing used in a new way Textbook reading: Bently, L. & Sherman, B. (2009) Intellectual property law. 3rd ed. Oxford: Oxford University Press, Chapter 18. 5. The Discovery of a new Advantage of an old thing used in an old way (pp. 478487) In the final section of their chapter on novelty, Bently and Sherman move away from the general principles of novelty and consider three specific types of inventions and the problems that have arisen when assessing their novelty. As they note, historically UK patent law recognised as novel inventions related to:

The discovery of new things The discovery of new ways of using old things
However, recent decades have seen an increase in research aimed at discovering new uses (or purposes) for old things used in the old ways. Historically such discoveries would be considered novel in that the claim to a product for a particular use was considered to be a claim to the product per se. Thus there could be no claim to novelty of purpose.
The three specific types of inventions discussed in the final section of the chapter represent areas in which this principle has slowly been undermined, often with the EPC leading the way.
New medical uses and subsequent medical uses.
As well as the discussion in B&S you should read the IPO Manual of Patent Practice Section 4AMethods of Treatment or Diagnosis.9 Subsequent uses for substances or compositions used in medical or veterinary methods of treatment or diagnosis have been specifically addressed by the inclusion of s4A (4) in the PA 1977 [equivalent to EPC Article 54(5)]. PA 1977 Section 4A (4):
Methods of treatment or diagnosis 4A.-(1) A patent shall not be granted for the invention of(a) a method of treatment of the human or animal body by surgery or therapy, or (b) a method of diagnosis practised on the human or animal body. (2) Subsection (1) above does not apply to an invention consisting of a substance or composition for use in any such method. (3) In the case of an invention consisting of a substance or composition for use in any such method, the fact that the substance or composition forms part of the state of the art shall not prevent the invention from being taken to be new if the use of the substance or composition in any such method does not form part of the state of the art. (4) In the case of an invention consisting of a substance or composition for a specific use in any such method, the fact that the substance or composition forms part of the state of the art shall not prevent the invention from being taken to be new if that specific use does not form part of the state of the art. [Bold added.]
Note that comments in your textbook related to Swiss-type claims have been superseded. The IPO manual notes in this regard (with bold added) that:
4A.27 Following implementation of the EPC 2000, the practice in both this Office and the EPO was to allow inventions relating to second medical uses to be claimed using either the direct second medical use claim format under Section 4A(4), or the Swiss-type format, or both, pending guidance from the UK courts and/or the EPO Boards of Appeal. In February 2010, the EPO Enlarged Board of Appeal issued its decision on G 02/08 ABBOTT RESPIRATORY/Dosage 10 regime. This decided that applicants may no longer claim second medical use inventions in the Swiss format . The Enlarged Board held that Swiss-type claims were previously accepted (in G 05/83 EISAI/Second medical indication [1985] 3 OJEPO 64) as the only possible means of protecting inventions relating to second medical uses in order to fill a loophole in the provisions of
9
10
Available from: http://www.ipo.gov.uk/practice-sec-004a.pdf (as at July 2010). Available from: http://documents.epo.org/projects/babylon/eponet.nsf/0/1c9976e4866080a2c12576cf00417e3e/$FIL E/G2_08_en.pdf. Note that application of this decision will take immediate effect for pending and new applications in the United Kingdom, but will only apply to European patent applications having a filing date or, if priority has been claimed, a priority date of later than three months after the publication of the decision in the Official Journal of the EPO (date yet to be determined).
the EPC 1973. The new Article 54(5) (equivalent to Section 4A(4)) fills this loophole by explicitly allowing claims to the further specific use of a known drug, and so the reason for this special, judge-made law no longer exists. 4A.27.1 Claims in the Swiss-type format in new or pending applications should be objected to on grounds of clarity, and must either be deleted or replaced by claims in the direct second medical use format substance X for use in the treatment of disease Y. This change in practice was announced in a Practice Notice issued on 26 May 2010, and reproduced in the Relevant Official Notices and Directions part of this Manual. The basis of the objection is that a Swiss-type claim lacks clarity because, although it is worded as defining a method of manufacturing a medicament, the invention in fact relates to the intended use of the product rather than the method of manufacture. As stated in G 02/08, there is no functional relationship between the feature conferring novelty (the intended use) and the claimed manufacturing process. Amendment of a patent application to replace a Swiss-type claim with the new form of second medical use claim is not considered to add matter, since regardless of the wording or scope of the claim, the technical disclosure (i.e., a new medical use for a substance or composition) is the same. There is no change in practice in relation to patents already granted and including Swiss-type claims. A request to make a post-grant amendment to replace Swiss-type claims with the new form of second medical use claim is unlikely to succeed, particularly as the Enlarged Board in G 02/08 suggested that the new form of claim may have a broader scope than Swiss-type claims.
Non-medical uses of known products (novelty of purpose patents).
Your textbook discusses the status of novelty of purpose patents, drawing the conclusion from the Enlarged Board of Appeal decision in Mobil/Friction reducing additive11 that it is now clear that the discovery of a new purpose for an old thing used in an old way is potentially patentable at the EPO, irrespective of the technical field in which the invention takes place. However, in the United Kingdom the IPO manual advises that it does not intend to follow the EPO in this regard. The manual explains12 (with bold added) that:
2.14 Likewise a claim to a material or composition for a particular purpose is regarded as a claim to the material or composition per se (Adhesive Dry Mounting Co Ltd v Trapp and Co, 27 RPC 341; G.E.C's Application, 60 RPC at page 3). A known product which is per se the same as the material or composition defined in the claim, but which is in a form which would render it unsuitable for the stated use, would not deprive the claim of novelty, but if the known product is in a form in which it is in fact suitable for the stated use, though it has never been described for that use, it would deprive the claim of novelty. In I. G. Farbenindustrie A.G.'s Patents, 47 RPC at page 322, it was stated that no man can have a patent merely for ascertaining the properties of a known substance. There is however an exception to this general principle where the claim is to a known substance or composition for use in a surgical, therapeutic or diagnostic method (see 4A.17). In contrast to the above general principle, the Enlarged Board of Appeal of the EPO has held in Decisions G 2/88 and G 6/88 (both in OJEPO 4/90) that a claim to the use of a known compound for a particular purpose, which is based on a technical effect which is described in the patent, should be interpreted as including that technical effect as a functional technical feature, and is accordingly not open to an objection of lack of novelty provided that such technical feature has not previously been made available to the public. In G 2/88 (Mobil), the new technical effect
11 12
G 2/88 [1990] Available from: http://archive.epo.org/epo/pubs/oj1990/p093_185.pdf. Available from: http://www.ipo.gov.uk/practice-sec-002.pdf (as at July 2010).
was the discovery that the claimed compound previously used in lubricant compositions to inhibit rust had friction reducing properties. A claim to the use of that compound in a composition for reducing friction was held to be novel even though such friction reduction had inherently occurred in its previous use. Similarly, in G 6/88 (Bayer), use of certain compounds as a fungicide was held to be novel even though the method of use was identical to a known use of the compound as a plant growth regulator. On the other hand, in Robertet SA/Deodorant compositions [2000] OJEPO 1 (T 892/94) it was held that a claim to the use of a known substance for a known purpose could not derive novelty from the discovery of a previously unrecognised technical effect underlying that use. However, these EPO decisions should not be followed and the existing practice of the Office should continue pending clarification or guidance from the courts. 2.14.1 The Offices existing practice is supported with the recent decision of the Patents Court in Tate & Lyle Technology v Roquette Frres [2010] FSR 1. Although the case does not refer to G 2/88 Mobil, it appears to take a different approach from the Enlarged Board to use claims based on an unrecognised technical effect. The only claim in question here was to the use of maltotriitol to modify or control the form of maltitol crystals. This was based on a previously unsuspected effect of an impurity (maltotriitol) on the crystallisation of the sweetener maltitol. This was held to lack novelty over a number of prior art documents which disclosed crystallisation of maltitol in the presence of maltotriitol at levels at which it would control crystal formation: The industry has been using maltotriitol to control or determine crystal habit without knowing it. What is left of the patent as granted is no more than a discovery as such.
Selection patents generic disclosure.
These are discussed in the relevant section of Bently and Sherman. In the IPO Manual of Patent Practice Section 2 Novelty13 the IPO discuss selection inventions (at 2.18-2.20) noting that:
2.18 A prior disclosure in general terms embracing a number of alternatives may amount to no more than a mere suggestion that any of the members, including any specifically exemplified, might be used, and may therefore be regarded as not anticipating a claim to a specific one of the members. An invention so claimed is generally referred to as a selection" invention and should meet the criteria set out in 3.89. In Union Carbide Corp v BP Chemicals Ltd [1998] RPC 1, it was held that a prior disclosure of a range should normally be regarded as disclosing each and every part of that range. However, there might be room for an invention along the lines of a selection invention if there was something special about a later-claimed part of the range. [Bold added.]
Note also that:

More recently, the Court of Appeal in Dr Reddys Laboratories (UK) Ltd v Eli Lilly & Co Ltd [2010] RPC 8 decisively rejected the argument that the mere disclosure of a generic formula or class of compounds discloses every possible compound falling within that class. [IPO Manual at 2.9.]
This week we have discussed what has been disclosed in the prior art in relation to determining the novelty of a new patent application. In Week 5 you will again consider disclosure in relation to that required within the patent application itself. In summary
13
Available from http://www.ipo.gov.uk/practice-sec-002.pdf (as at July 2010).
This weeks work has introduced you to the concept of novelty in patent law, including the process of examining prior art. Next week you will go on to consider the inventive step, including the concept of obviousness in patent law, and ways in which the law determines obviousness.

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University of Liverpool

(pp. 464466) (p. 466)

EPC 2000 Article 52 (1):

EPC 2000 Article 54:

Note that EPC Article 53 (c) is:

EPC 2000 Article 54 (2)

What is the invention? As Hoffman LJ noted in Merrrell Dow v Norton:3

The state of the art [PA 1977 s2(2)]:

Prior disclosure (see IPO Manual at 2.03 to 2.09).

New medical uses and subsequent medical uses.

Non-medical uses of known products (novelty of purpose patents).

Selection patents generic disclosure.

Note also that:

Available from http://www.ipo.gov.uk/practice-sec-002.pdf (as at July 2010).

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