UK: Is A Numerical Range Novel If It Overlaps With A Previously Disclosed Numerical Range?

Last Updated: 12 September 2018
Article by Edith Penty Geraets

The Court of Appeal considered this scenario in Jushi v OCV. To a certain extent, this judgment brings the UK approach to patentability of overlapping numerical ranges in line with the established approach at the European Patent Office (EPO). However, further clarification is still needed.

Background to the case

OCV's patent related to glass fibres or "strands" for inclusion as reinforcement in other materials such as glass-reinforced plastic. The main claim was directed to a glass strand and recited the weight percentage ranges of various constituents of the strand, e.g. silicon dioxide (SiO2) at 58-63%, aluminium oxide (Al2O3) at 12-20% and so forth.

A prior art document in the same field also disclosed glass fibres — of which the percentage ranges of 12 constituents overlapped with the claimed ranges in the patent.

The patentee (OCV) acknowledged the same prior art document in its patent and included a comparative test between the claimed glass fibres and those of the prior art document, showing that the claimed selection of percentage ranges resulted in a glass strand with improved performance.

Jushi sought revocation of OCV's patent on the basis that the patent claims were anticipated (lacked novelty) over the fibres disclosed in the prior art.

EPO approach to overlapping ranges

At the EPO, overlapping ranges are dealt with during examination by establishing whether a person skilled in the art would "seriously contemplate" applying the technical teaching of the prior art document in the range of overlap (T 26/85). Both the UK courts and EPO's approach has been consistent, in that novelty is destroyed if the prior art discloses an example falling within the overlapping range.

However, at the EPO, for novelty to be acknowledged for an overlapping range there must also be a technical effect associated with the claimed range, i.e. the claimed range must not be an arbitrary selection. This test is akin to the test applied for "selection inventions", i.e. the selection of narrower subject-matter from a broader disclosure.

The need to demonstrate a technical effect in order to establish novelty essentially links the assessment of novelty with the assessment of inventive step — and for this reason, the UK courts have been reluctant to follow the EPO's approach.


The previous test used by UK courts when considering overlapping ranges was to establish whether the matter relied upon as prior art disclosed subject-matter which, if performed, would inevitably result in something that fell within the claims of the patent in suit.

However, the first instance judge considered that the EPO test of "serious contemplation" was a more appropriate test.

On appeal, the Court upheld the finding of novelty. In particular, the Court was not satisfied that the skilled person would seriously contemplate the production of glass fibres that incorporated each and every range of overlap that would be needed to arrive at a glass fibre falling within the scope of the claims. This was because a skilled person would expect small changes in constituent percentages to have a large impact on the properties of the resulting glass fibres, and therefore would not choose any combination of values from the prior art ranges.

However, unlike the EPO approach, the Court of Appeal did not explicitly contemplate the presence of a technical effect in the claimed percentage ranges in order to arrive at the finding of novelty. This is perhaps because a technical effect was implicit from the comparative data in the application.

The Court of Appeal also held (with a strikingly similar justification to the assessment of novelty) that in the absence of a reason to do so, the skilled person would be unlikely to vary the relative amounts of each constituent in the prior art due to the impact on the resulting properties. Therefore, the Court concluded that the skilled person would not deviate significantly from the examples disclosed in the prior art.

As a result, OCV's patent was held to be valid.


This case helpfully brings the UK approach on assessing novelty of overlapping ranges in line with the EPO's approach of considering "serious contemplation". However, the Court did not provide any comment on if, or under what circumstances, the presence of a technical effect would need to be demonstrated in order to establish novelty in an overlapping range.

It is expected that the UK courts will now also follow the EPO's approach with respect to demonstrating a technical effect in an overlapping range. However, we will need to wait for a further case to confirm this expectation.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions