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In EPO application, there is one document in search report and publication date of that document is after my priority date. The examiner says my 1st claim is not novel over D1. However, D1 doesn't contain an element which is in my 2nd claim and it is novel over D1 but examiner says it is slight constructal changes and because of that it doesn't provide inventive step. Please correct me if I'm wrong but "E" documents isn't used for determination of the inventive step if claim is novel.

Is there a practical mistake by EPO or I miss something?

Best regards.

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    You have some accurate answers below, but yes, it seems to be a mistake by the examiner. Any slight difference between your subject-matter and the document makes your invention novel, and inventive step is out of the question with such type of documents. Oct 6 at 19:27
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As another answer points out, there is usually back and forth with the examiner to get to allowable claims.

You are correct that under EPO rules some specific patent documents filed earlier than your priority date but published after your priority date can be used for determining novelty but not for determining inventive step. It is very ingrained in the EPO system but could be a mistake by an examiner. Or there is a misunderstanding somewhere.

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    You are right, but I'd like to make a small clarification. It cannot be any patent document, it must be an EP patent (application) or a PCT application designing EP. In the latter case, the lack of novelty can only exist if said PCT eventually enters into the European regional phase. Oct 6 at 19:22
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    @theEuropeist - maybe it would help the OP for you to give a full answer since it is complex than I thought.
    – George White
    Oct 6 at 20:28
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I'm sure you'll get a better answer, but my experience is it is common for examiners to reject claims on some flimsy or even baseless reason. Your lawyer then explains why they are misinterpreting things and a negotiation occurs. Sometimes you need to edit the claim language to appease the examiner.

I'm not a lawyer, but I don't remember any of my patents being approved without such a back and forth with the examiner.

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In EP patent prosecution, aside from the requirements of novelty (Art. 54 EPC) and inventive step (Art. 56 EPC) that the invention must meet with regards prior art that has been published before the effective date of the patent application, the invention shall also meet the requirement of novelty with regards any EP patent (application) that was filed before the effective date and became public after the effective date or on the same date (Art. 54(3) EPC). This requirement forbids the double patenting of same subject-matter.

The Art. 54(3) EPC provision indirectly also considers PCT application designing the EPO as prior art that might be cited for novelty purposes as long as it was filed before the effective date and became public after the effective date or on the same date. Notwithstanding, for double patenting to exist in this scenario the PCT would have to be entered into the European regional phase. What this means in practice is that if there is such prior PCT application, the EP application that you are prosecuting cannot become a European patent until it is certain that the PCT application does not enter into the European regional phase. Therefore, the intention to grant communication shall only be issued by the EPO after:

  • the 31 months for entering the PCT into the European regional phase have expired,
  • the additional 2+ months for entering the PCT into the European regional phase requesting further processing (Art. 121 EPC) have also expired, and
  • the PCT did not enter into the European regional phase by then

It is irrelevant that the prior EP patent application is refused or becomes abandoned and so no double patenting could exist, the novelty requirement will not be fulfilled in your EP patent application.

A minor difference between your subject-matter and the prior EP patent application will make your subject-matter novel. The prior EP patent application cannot be cited for lack of inventive step.

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