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1. Novelty of chemical (groups of) compounds

Art. 54 of the European Patent Convention (EPC) states that:

(1) An invention has to be considered to be new if it does not form part of the state of the art.
(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.

In the field of chemistry or pharmacy, a composition or internal structure of a prior sold product, which has been made available to the public, is part of the state of the art within the meaning of Art. 54(2) EPC, if direct and unambiguous access to such information was possible by means of known analytical techniques which were available for use by a person skilled in the art before the relevant filing date.

The likelihood of a skilled person analysing such a prior art sold product and the degree of burden (i.e. the amount of work and time involved in carrying out such an analysis) were in principle irrelevant to the determination of what constituted the state of the art.
Therefore, the claim related to such a product is deprived of novelty, if an analysis of a prior sold product was such as to inform the skilled person of an embodiment of the product which fell within the claims (Decision T952/92 (OJ 1999, 755)).

2. Criteria for Selection Inventions

A selection of a sub-range of numerical values from a broader range is new, when each of the following criteria is satisfied:

a) the selected sub-range should be narrow;
b) the selected sub-range should be sufficiently far removed from the preferred part of the known range (as illustrated for instance in the examples given in the prior art);
c) the selected sub-range should not be an arbitrarily chosen specimen from the prior art, i.e. not merely one way of carrying out the prior art teaching, but must provide a new invention (purposive selection) (Decision T279/89).

Furthermore, the European Patent Office has recognised the novelty of selection inventions in the following categories:

• If the subject-matter of an invention is a particular compound, whereas the prior art discloses a family of compounds defined by a general structural formula including this particular compound (but not describing it explicitly), the invention has to be considered novel (Decision T133/92).
• The European Patent Office has also recognised that the description of racemates does not anticipate the novelty of the spatial configurations contained in them. Racemates comprise substances that may occur in a plurality of conceivable spatial configurations (D and L enantiomers) but are not by themselves revealed thereby in an individualised form.

Methods which may exist to separate the enantiomer from racemates should only be considered with respect to a possible lack of inventive step.

However, the disclosure by description in a cited document of the starting material of an end product as well as its reaction process is always prejudicial to novelty because those data unalterably will lead to the end product.