1. Is it true that third-party applications which are filed earlier but unpublished at the time of filing are not considered prior art for inventive step purposes in the EPO? If so, this is a huge difference from the US, especially for fast-moving technologies.

From EPO examination guidelines:

The state of the art also comprises the content of other European applications filed or validly claiming a priority date earlier than – but published under Art. 93 on or after – the date of filing or valid date of priority of the application being examined. Such earlier applications are part of the state of the art only when considering novelty and not when considering inventive step.

  1. Assuming (1) is true, do the same rules apply in the EPO for non-EPO applications that are earlier-filed, not-yet-published?

  2. (Bonus) Are the other major jurisdictions (JP, CN, KR) in line with the EPO or US on this?

1 Answer 1

  1. Yes. You already cited the correct source, a further one would be art. 54 (2), (3) EPC:

(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.

In combination with art 56 EPC which literally answers your question:

An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art. If the state of the art also includes documents within the meaning of Article 54, paragraph 3, these documents shall not be considered in deciding whether there has been an inventive step.

  1. Actually, only unpublished EP-Applications (or PCT-EP) are prior art before publishing for novelty, an unpublished US application is not even prior art for novelty. None is for inventive step.

By the way, in the US, prior US applications are prior art for both, prior foreign applications for none.

  1. Afaik JP, CN are in line with the EPO on this, with respective national applications. The US is the outlier.
  • Can't believe I didn't realize this until now. Though I will add that foreign priority can come into play, e.g. at least in the US, if an (even later-filed,) unpublished domestic application claims benefit of that foreign priority.
    – user132162
    May 9, 2018 at 14:31
  • DonQuiKong, regarding your answer to p2 do you have reference to EPC articles/rules, EPO guidelines or EPO case law?
    – Mikk Putk
    May 9, 2018 at 15:29
  • @MikkPutk it follows from the cited art. 54(2) and 56 or what do you mean?
    – user18033
    May 9, 2018 at 16:49
  • Also, based on this alone, this would allow two different patentees/potential infringees to have patents on obvious variants of the same matter, and obviousness-type double-patenting rejections would seem to not to exist in the EPO (unlike the US).
    – user132162
    May 9, 2018 at 17:02
  • @user132162 yes.
    – user18033
    May 9, 2018 at 17:04

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