Novelty (patent)

Patent law (patents for inventions)
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Patentable subject matter Novelty  · Utility Inventive step and non-obviousness Industrial applicability Person skilled in the art Prior art · Inventorship
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Sufficiency of disclosure Unity of invention
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Novelty is a patentability requirement. An invention is not patentable if the claimed subject matter was disclosed before the date of filing, or before the date of priority if a priority is claimed, of the patent application.

In some countries, such as the United States, Canada, Australia and Japan, a grace period exists for protecting an inventor or their successor in title from authorised or unauthorised disclosure of the invention before the filing date. That is, if the inventor or the successor in title publishes the invention, an application can still be validly filed which will be considered novel despite the publication, provided that the filing is made during the grace period following the publication. The grace period is usually 6 or 12 months. This type of novelty bar is sometimes known as a relative novelty bar.^{[dubious – discuss]}

In other countries, including European countries, any act that makes an invention available to the public, no matter where in the world, before the filing date or priority date has the effect of barring the invention from being patented. Examples of acts that can make an invention available to the public are written publications, sales, public oral disclosures and public demonstrations or use. This is known as an absolute novelty requirement.^{[dubious – discuss]}

Local novelty (as is currently the requirement in New Zealand) only regards publications, uses or sales that have taken place within that jurisdiction to be novelty destroying. Local novelty by publication is now largely extinct under New Zealand practice. This leaves only “local novelty by use”, which is rather limited, even to the point of irrelevance. Therefore, to all intents and purposes, New Zealand patent law already appears to operate on a de facto absolute novelty basis.^{[citation needed]}

The grace period should not be confused with the priority year defined by Paris Convention for the Protection of Industrial Property. The priority year starts when the first filing in a Contracting State of the Paris Convention is made, while the grace period starts from the pre-filing publication.

Jurisdictions

European Patent Convention

Main article: Novelty under the European Patent Convention

Under the European Patent Convention (EPC), European patents shall be granted for inventions which inter alia are new. The central legal provision governing the novelty under the EPC is Article 54 EPC.

United States

In the United States the four most common ways in which an inventor will be barred under Section 102 are:

1. by making the invention known or allowing the public to use the invention; or
2. having the invention published in a fixed medium (such as in a patent, patent application, or journal article); or
3. if the invention was previously invented in the U.S. by another, who has not abandoned, suppressed, or concealed the invention, or
4. if the invention was described in a patent application filed by another, where the application later issues as a US patent.

In U.S. patent law, anticipation occurs when one prior art reference or event discloses all the features of a claim and enables one of ordinary skill in the art to make and use the claimed invention; the claim is then said to lack novelty. The term "features" in this context refers to the elements of the claim or its limitations. For a more detailed explanation, see the article All elements rule.

A prior art reference must not only disclose every feature of a claim, but must also disclose the features arranged or combined in the same way as the claim.^[1]

Prior art search

Main article: prior art

The standard method for researching the novelty of an invention is to perform a prior art search. A prior art search is generally performed with a view to proving that the invention is "not new" or old. No search can possibly cover every single publication or use on earth, and therefore cannot prove that an invention is "new". A prior art search may for instance be performed using a keyword search of large patent databases, scientific papers and publications, and on Google. However, it is impossible to guarantee the novelty of an invention, even once a patent has been granted, since some obscure little known publication may have disclosed the invention as claimed.

See also

• Disclaimer (patent)
• Filing date
• Doctrine of inherency
• Prior art (including a discussion on novelty searches)
• Priority right

References

1. ^ MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008)

External links

• Enlarged Concept of Novelty on the WIPO site
• Grace Period and Invention Law in Europe and Selected States, a comparative study of grace periods applicable for assessing novelty (by IPR-Helpdesk, a project of the European Commission DG Enterprise, co-financed within the fifth framework programme of the European Community)
• British Patent Office regulations