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Novelty of Overlapping Ranges: Joshi v OCV
The UK’s Court of Appeal recently clarified the UK approach to the patentability of numeric ranges.
Historically in both the UK and at the EPO, ranges overlapping with a known range are deemed to be novel, so long as the prior art does not disclose specific values within the overlapping range.
Over time however, UK and EPO case law have evolved differently to one another.
EPO case law has established that the claimed range must have a technical effect to be novel i.e. it must also be inventive.
When assessing novelty, the EPO also considers whether a skilled person would be able and reasonably expected to operate within the overlap. In particular, the EPO has established that an overlapping range lacks novelty if a skilled person would have “seriously contemplated” operating within it.
The UK courts were reluctant to adopt the EPO’s approach to novelty, arguing that requiring a technical effect should be relevant to assessing inventive step only, but not to novelty. As such, the UK courts previously only assessed the novelty of an overlapping range on the basis that it is a narrower selection than the prior art, with no further criteria.
However, the UK courts have now changed their approach following a recent appeal on the novelty and inventive step of OVC’s EP(UK) patent in Joshi v OVC  EWCA.
OVC initially threatened Joshi, a Chinese fibreglass manufacturer, with an infringement action. In response, Joshi brought forward a revocation action against OVC’s patent.
The OVC patent relates to glass reinforcement stands, with claim 1 defining a glass strand made of a number of compounds at percentage weights within specified ranges. The sole prior art document that was cited against the OVC patent discloses the same compounds at the same or overlapping percentage weights.
The question of novelty and inventive step was first handled by the UK’s Intellectual Property Enterprise Court (IPEC). The IPEC held that the OVC patent was novel, simply because the Claimant Joshi was unable to prove lack of novelty.
The case then moved to the UK’s Court of Appeal, which further held that the OVC patent was novel by applying the EPO approach – namely by considering whether a skilled person would have seriously contemplated operating within the overlap.
In its decision, the Court of Appeal argued that a skilled person would expect small changes in percentages to have large non-linear effects on the properties of glass fibres. This led to the conclusion that the skilled person would not indiscriminately choose any combination of values from the disclosed ranges.
This decision now clarifies that the UK’s assessment of novelty is in line with the EPO’s approach – i.e. that an overlapping range is novel if it has not been seriously contemplated by the skilled person in view of the prior art.
If you have any questions on novelty, or any other aspects of patentability, please contact Andy Cloughley at email@example.com.