0

I'm trying to understand the relationship between a general and a specific feature. I'm specifically relating to an EPO guideline:

Generic disclosure and specific examples

In considering novelty, it is to be borne in mind that a generic disclosure does not usually take away the novelty of any specific example falling within the terms of that disclosure, but that a specific disclosure does take away the novelty of a generic claim embracing that disclosure, e.g. a disclosure of copper takes away the novelty of metal as a generic concept, but not the novelty of any metal other than copper, and one of rivets takes away the novelty of fastening means as a generic concept, but not the novelty of any fastening other than rivets.

I will try to add an example:

Claim: There is a drill suitable for a velocity 1000 and 20000 rpm to drill in a specific material X.

Now, someone else found out after quite an effort and a lot of studies, that, when you set the velocity to 10000 rpm you will gain the best results to drill in this material X (in terms of time, wear, result). Would this discovery still be covered by the claim/patent before or would it be new?

2
  • 1
    Not that it matters to the gist of your question, but I'd like to clear up something. Torque is not measured in RPM. Angular velocity is. Torque is measured in units like newton-meters or foot-pounds.
    – Eric S
    Sep 15 at 14:21
  • true, thanks! I should have been aware of this.
    – Ben
    Sep 16 at 6:44
2

The actual question 'Would this discovery still be covered by the claim/patent before or would it be new?' has two questions as pointed out by Eric S and George White:

  • Is the development covered by the claim? As stated by Eric S, yes, it is covered because the development is within the claimed scope.
  • Is the development new with respect to the claim? It could be.

The following is an attempt to clarify a little bit the novelty requirement in light of the Guidelines cited in the question and the example provided, because there are two different things in there.

  • [About the Guidelines of the EPO] Genus-Species: What is being cited is the novelty requirement that any invention must comply with. The Guidelines describe the genus-species scenario as not being a two-way street when it comes to novelty. A prior art disclosure of say a mechanical device made of metal (genus) does not anticipate a claim directed to the same mechanical device but made of copper (a species of the genus). But if it is the opposite, that is to say, the mechanical device made of copper is the prior art disclosure and your claim is directed to the mechanical device made of metal, then your claim is not novel.

  • [About the example] Selection invention: Although you could relate the example to the passage of the Guidelines to establish whether your development is novel over the prior art example, the passage is really meant for terms rather than ranges. The example of the question is about ranges, and like genus-species, it belongs to selection inventions. You can find Guidelines for selection inventions as well, here you have the criteria for assessing novelty and here the criteria for assessing inventive step of a specific sub-range (or species) within a disclosed range (or genus).

At the EPO it is quite tricky to figure out whether a sub-range is novel and inventive over some disclosed range. Although your development could attain some unexpected result that may be an indicator of potential inventive step, it might happen that the sub-range is not novel. That depends, for example, of how far the sub-range is from values disclosed in the prior art, how large the sub-range is, etc. If you are interested in that, I recommend you to review the two links above.

1

If someone gets a claim on using a specific drill design used between 1000 and 20,000 rpm. Then yes this covers the use of the specific drill design at 10,000 rpm since that speed is within the claimed range.

Based on the comment by George White, I realize I might be thinking too narrowly. The EPO quote isn't quite related to the question of drilling speeds as, for instance the copper vs. a metal other than copper as the drill isn't changing. However there might be some unexpected result within the claimed range. This is more likely in something like chemistry or metallurgy where very specific ranges can incur strong effects. So if some very narrow range of concentrations causes a unique alloy property undisclosed by the original patent, you might be able to claim the narrow range.

I am not a lawyer, but simply a multiple patent holder. I always recommend consulting with an actual patent attorney or agent experienced in your field.

5
  • But someone else can get a narrower patent on a subset of a known range that they discover to be particularly sensitive. See ranges within ranges venable.com/insights/publications/2012/03/…
    – George White
    Sep 16 at 3:30
  • @GeorgeWhite I’d encourage you to write an answer regarding this.
    – Eric S
    Sep 16 at 4:02
  • But isn't the EPO guideline stating exactly that it wouldn't be covered?
    – Ben
    Sep 16 at 6:45
  • 2
    @Ben Perhaps based on George White’s comment. I’m not a lawyer, but something unexpected would have to occur at just that condition. This is unlikely with drilling, but perhaps with a chemical reaction there might be something.
    – Eric S
    Sep 16 at 14:28
  • 1
    @Ben Please see my edited answer.
    – Eric S
    Sep 16 at 15:43

Your Answer

By clicking “Post Your Answer”, you agree to our terms of service, privacy policy and cookie policy

Not the answer you're looking for? Browse other questions tagged or ask your own question.