The Patenters - חברה לרישום פטנטים

Exam Revisions of Patent Office 2017 Part 2: new use


As discussed in part 1, this draft will be open until 15 December 2017.  However, some room will be allowed for later comments. Below are my comments regarding: New use

A claim directed to new use of a known product of process will be considered as having novelty.

The Israel Patent Office refers to Lanplast vs. Eliezer Berkman and Mulipurpose Laser Board Screen Ltd., 24 January 1990 at the High Court of Justice. In order for a new use to be eligible for patent the claims must not be for the actual usage. However, they could be anchored in a product or process, or both.  Furthermore, the new use should have inventive step in reference to the former use, i.e. not an analogous use.

To the best of my knowledge this approach is a departure from the previous policy. That policy denied patents for new use alone.

I welcome this alignment with the case law but I think that this issue needs clarification.   Referring to the EPO’s Case Law of The Boards of Appeal:

It is long standing office practice that a formulation such as “apparatus for” is to be interpreted as meaning an apparatus which is suitable for the stated use. See for example Guidelines F‑IV, 4.13 – November 2015 version; T 1389/10). As explained in the Guidelines, as e.g. in the case of a mould for molten steel, the stated use may imply certain physical limitations (size, material). Without these the apparatus could not be used for that purpose. Any prior art apparatus which, in addition to features expressly mentioned in the claim also possesses these implicit physical features and can thus reasonably be used for the stated purpose will then take away novelty of the claimed apparatus. This is irrespective of whether or not the prior art mentions the stated use or purpose or whether the stated use is obvious or not. This is because the claim is directed at the apparatus, not its use. Nor can stating a use that is new and not-obvious render an apparatus which is already known novel and inventive.


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