Novelty (patent)
Encyclopedia
Novelty is a patentability
requirement. An invention
is not patentable if the claim
ed 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.
In other countries, including Europe
an 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.
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.
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.
(EPC), European patents shall be granted for invention
s which, among other things, are new. The central legal provision governing the novelty under the EPC is .
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.
:
The section does not restrict disclosure to prior patents, giving a broad description of what includes prior disclosure; so long as the subject-matter was disclosed “in such manner that the subject-matter became available to the public”, the subject-matter is barred from being patented. This may include prior patents, publications or the invention itself being put on display. Disclosures in a private document, such as an internal memo that is not available to the public, do not count.
There is an eight-pronged test to determine whether anticipation occurs in Canada. The prior art must:
Patentability
Within the context of a national or multilateral body of law, an invention is patentable if it meets the relevant legal conditions to be granted a patent...
requirement. An invention
Invention
An invention is a novel composition, device, or process. An invention may be derived from a pre-existing model or idea, or it could be independently conceived, in which case it may be a radical breakthrough. In addition, there is cultural invention, which is an innovative set of useful social...
is not patentable if the claim
Claim (patent)
Patent claims are the part of a patent or patent application that defines the scope of protection granted by the patent. The claims define, in technical terms, the extent of the protection conferred by a patent, or the protection sought in a patent application...
ed subject matter was disclosed before the date of filing, or before the date of priority
Priority right
In patent, industrial design rights and trademark laws, a priority right or right of priority is a time-limited right, triggered by the first filing of an application for a patent, an industrial design or a trademark respectively...
if a priority is claimed, of the patent application
Patent application
A patent application is a request pending at a patent office for the grant of a patent for the invention described and claimed by that application. An application consists of a description of the invention , together with official forms and correspondence relating to the application...
.
In some countries, such as the United States
United States
The United States of America is a federal constitutional republic comprising fifty states and a federal district...
, Canada, Australia and Japan
Japan
Japan is an island nation in East Asia. Located in the Pacific Ocean, it lies to the east of the Sea of Japan, China, North Korea, South Korea and Russia, stretching from the Sea of Okhotsk in the north to the East China Sea and Taiwan in the south...
, 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.
In other countries, including Europe
Europe
Europe is, by convention, one of the world's seven continents. Comprising the westernmost peninsula of Eurasia, Europe is generally 'divided' from Asia to its east by the watershed divides of the Ural and Caucasus Mountains, the Ural River, the Caspian and Black Seas, and the waterways connecting...
an countries, any act that makes an invention available to the public, no matter where in the world, before the filing date or priority date
Priority right
In patent, industrial design rights and trademark laws, a priority right or right of priority is a time-limited right, triggered by the first filing of an application for a patent, an industrial design or a trademark respectively...
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.
Local novelty (as is currently the requirement in New Zealand
New Zealand
New Zealand is an island country in the south-western Pacific Ocean comprising two main landmasses and numerous smaller islands. The country is situated some east of Australia across the Tasman Sea, and roughly south of the Pacific island nations of New Caledonia, Fiji, and Tonga...
) 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.
The grace period should not be confused with the priority year defined by Paris Convention for the Protection of Industrial Property
Paris Convention for the Protection of Industrial Property
The Paris Convention for the Protection of Industrial Property, signed in Paris, France, on March 20, 1883, was one of the first intellectual property treaties. It established a Union 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.
European Patent Convention
Under the European Patent ConventionEuropean Patent Convention
The Convention on the Grant of European Patents of 5 October 1973, commonly known as the European Patent Convention , is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to which European patents are granted...
(EPC), European patents shall be granted for invention
Invention
An invention is a novel composition, device, or process. An invention may be derived from a pre-existing model or idea, or it could be independently conceived, in which case it may be a radical breakthrough. In addition, there is cultural invention, which is an innovative set of useful social...
s which, among other things, are new. The central legal provision governing the novelty under the EPC is .
United States
In the United States the four most common ways in which an inventor will be barred under Section 102 are:- by making the invention known or allowing the public to use the invention; or
- having the invention published in a fixed medium (such as in a patent, patent application, or journal article); or
- if the invention was previously invented in the U.S. by another, who has not abandoned, suppressed, or concealed the invention, or
- 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.
Canada
In Canada, the requirements for novelty are codified under section 28.2 of the Patent Act (R.S.C., 1985, c. P-4)Patent Act (Canada)
The Canadian Patent Act is Canadian federal legislation and is one of the main pieces of Canadian legislation governing patent law in Canada. It sets out the criteria for patentability, what can and cannot be patented in Canada, the process for obtaining a Canadian patent, and provides for the...
:
The section does not restrict disclosure to prior patents, giving a broad description of what includes prior disclosure; so long as the subject-matter was disclosed “in such manner that the subject-matter became available to the public”, the subject-matter is barred from being patented. This may include prior patents, publications or the invention itself being put on display. Disclosures in a private document, such as an internal memo that is not available to the public, do not count.
There is an eight-pronged test to determine whether anticipation occurs in Canada. The prior art must:
- give an exact prior description;
- give directions which will inevitably result in something within the claims;
- give clear and unmistakable directions;
- give information which for the purpose of practical utility is equal to that given by the subject patent;
- convey information so that a person grappling with the same problem must be able to say "that gives me what I wish";
- give information to a person of ordinary knowledge so that he must at once perceive the invention;
- in the absence of explicit directions, teach an "inevitable result" which "can only be proved by experiments"; and
- satisfy all these tests in a single document without making a mosaic.
Prior art search
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)Disclaimer (patent)In patent law, a disclaimer are words identifying, in a claim, subject-matter that is not claimed. By extension, a disclaimer may also mean the action of introduction a negative limitation in a claim, i.e. "an amendment to a claim resulting in the incorporation therein of a "negative" technical...
- Filing date
- Doctrine of inherencyDoctrine of inherencyIn United States patent law, for a patent claim to be valid, it must claim a subject matter that is novel and non-obvious. A claim is anticipated if a single prior art reference, either expressly or inherently, discloses every feature of a claimed invention...
- Prior artPrior artPrior art , in most systems of patent law, constitutes all information that has been made available to the public in any form before a given date that might be relevant to a patent's claims of originality...
(including a discussion on novelty searches) - Priority rightPriority rightIn patent, industrial design rights and trademark laws, a priority right or right of priority is a time-limited right, triggered by the first filing of an application for a patent, an industrial design or a trademark respectively...
External links
- Enlarged Concept of Novelty on the WIPOWorld Intellectual Property OrganizationThe World Intellectual Property Organization is one of the 17 specialized agencies of the United Nations. WIPO was created in 1967 "to encourage creative activity, to promote the protection of intellectual property throughout the world"....
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