Substantive examination and the main requirements to obtain a patent: novelty, inventive step and industrial applicability

After you requested examination and paid the appropriate fee, your application is transferred to the examining division, where it is subjected to substantive examination. (If no request for examination is made within six months of publication, your application will be deemed to be withdrawn.)

What is substantive examination?

Substantive examination considers the patentability of the application and the invention, i.e. whether the invention is new, involves an inventive step, is capable of industrial application and does not fall within excluded subject-matter and some other requirements, such as whether the invention as disclosed in the application can be reproduced, the clarity of the claims, or whether any amendments go beyond the disclosure of the application as originally filed.

If the examination reveals that the application or the invention to which it relates does not meet the requirements of the European Patent Convention (EPC), the examiners will raise objections and invite you to amend your application and/or explain certain aspects of your application or invention. You may at any time request oral proceedings. For maximum objectivity there are three EPO examiners dealing with one application, one of whom maintains contact with your patent attorney. If all objections raised by the examiners are overcome, a patent will be granted. Otherwise the application will be refused.

When does substantive examination take place?

The substantive examination takes place after the publication, but it does not start automatically. You have to request it and also pay a fee. 

The examination stage can last for 2-3 years, the average time – according to statistics from 2021 – being 23 months. Since it might last for years, you may have to pay multiple renewal fees (e.g. for 3rd and 4th year) meanwhile.

You can find a separate article on the different stages of the procedure, please read it to get a full overview of the European patenting process: "European patent application timeline with expected costs"

Main requirements of patentability: novelty, inventive step and industrial applicability

1. NOVELTY

An invention is considered to be new if it does not form part of the state of the art, i.e. if it has never been published before the date of filing (or, if priority is claimed, the date of priority).

The definition of state of the art is everything that was made available to the public anywhere in the world by any means before the date of filing or priority.

Basically, your invention has to be different from anything published before. If you claimed priority, any document published after your priority date cannot be cited against your application, even if it was published before your filing date (except in rare circumstances).

For example, let's assume that you filed an application on 1st February 2019 in the United Kingdom. Then, within one year, on 10th January 2020 you file a European patent application for the same invention, claiming priority of your UK application. In this case, when the European Patent Office (EPO) examines the patentability of your European application, they will only check documents published before 1st February 2019. If you or someone else published the details of your invention between 1st February 2019 and 10th January 2020, it will not be novelty destroying for your European patent application that was only filed later. That is why priority right is so valuable.

The novelty is described in Art. 54 EPC.

2. INVENTIVE STEP

Inventive step is probably the most subjective requirement, which is also the most difficult to overcome. An invention is only patentable if it is not obvious to the skilled person in the light of the state of the art. In order to obtain a valuable exclusive right, you are expected to exercise skill or ability beyond what could be known by a skilled person in your technical field, and your invention has to be something more than just an obvious combination of known features or just the substitution of a material.

For example, there is an inventive step if the prior art is teaching away, and the invention is overcoming a technical prejudice. This applies in particular when the skilled person would not even consider carrying out experiments to determine whether these were alternatives to the known way of overcoming a real or imagined technical obstacle. Another example for inventive step, when a known working method is used for a different purpose the method also involving a new, surprising effect.

Examples from EPO Guidelines:

A) "Machine for producing sausages consists of a known mincing machine and a known filling machine disposed side by side." - This is not inventive, since it is merely a combination of two known devices.

B) "The invention relates to a pump which differs from a known pump solely in that its motive power is provided by a hydraulic motor instead of an electric motor." - This is not inventive, since it differs from the known art merely in the use of well-known equivalents.

C) "In a process where substance A and substance B are transformed at high temperature into substance C, it was known that there is in general a constantly increased yield of substance C as the temperature increases in the range between 50 and 130°C. It is now found that in the temperature range from 63 to 65°C, which previously had not been explored, the yield of substance C was considerably higher than expected." - In this case, the invention involves special selection within a known range, such selection producing unexpected effects in the operation. This example represents a not obvious and consequently an inventive selection among a number of known possibilities.

Allow me to explain the difference between novelty and inventive step with a quick example: There is a known product having a certain feature made of aluminium. You come up with an invention, that is the same product, but the material of that certain feature is steel. What will happen when you try to patent this invention? Most probably, the invention will satisfy the requirements of novelty (because it is different from anything ever published), but it will not be found inventive (because it is an obvious change, you just selected another type of metal). You can see that overcoming the requirement of novelty is easier than proving that your invention is inventive.

Inventive step is described in Art. 56 EPC.

3. INDUSTRIAL APPLICABILITY
An invention is considered as susceptible of industrial application if it can be made or used in any kind of industry (in the sense of this Article, agriculture is also regarded as an industry). The description has to indicate explicitly the way in which the invention is capable of exploitation in industry (if it is not evident). Another requirement for an invention to be considered susceptible of industrial application is that the technical teaching disclosed in the application is reproducible. To name an example, an invention contrary to the laws of physics (e.g. perpetual motion machine) does not satisfy the requirement of industrial applicability.

Industrial applicability is described in Art. 57 EPC.

In addition to the above points, the application has to satisfy some further requirements, which are also examined by the EPO in the examination stage. A few important of these are: sufficient disclosure*, clarity**, and that the application does not include any new subject matter that was not originally included in the application as filed***.

* This is defined in Art. 83 EPC.
"The European patent application shall disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art."
See the full legal text here.

** This is defined in Art. 84 EPC.
"The claims shall define the matter for which protection is sought. They shall be clear and concise and be supported by the description."
See the full legal text here.

*** This is defined in Art. 123(2) EPC.
"The European patent application or European patent may not be amended in such a way that it contains subject-matter which extends beyond the content of the application as filed."
See the full legal text here.

Author: Zsofia Pintz
Published: August 2020
Updated: July 2023