PATENTS – EPO BoA on the assessment of novelty and inventive step of pharmaceutical selection inventions

In its decision T-1356/21 (the “Case”), the Board of Appeal of the EPO (“BoA”) provided some clarifications on the criteria for evaluating the novelty and non-obviousness of pharmaceutical selection inventions. First of all, in line with the EPO’s previous case law, the BoA clarified that the purposive selection criterion should not be applied for the novelty assessment of inventions relating to dosage regimes. Secondly, with regard to the inventive step, the BoA highlighted that an additional effect represents a “bonus” under EPO case law, and thus is obvious in situations which qualify as a “one-way street” or if, considering the technical and practical importance of the effects achieved by the claimed invention in the circumstances of the case, the additional effect is merely accidental.

Newsletter n. 92 – January 2024