G - patentability CH5

Question 1

1. General

Answer 1

There are two specific instances (and these are the only two) in which a prior disclosure of the invention is not taken into consideration as part of the state of the art, viz. where the disclosure was due to, or in consequence of:

Art. 55(1)

(i)
an evident abuse in relation to the applicant or that party’s legal predecessor – e.g. the invention was derived from the applicant or that party’s legal predecessor and disclosed against their wish; or

Art. 55(1)(a)

(ii)
the display of the invention by the applicant or that party’s legal predecessor at an officially recognised international exhibition as defined in Art. 55(1)(b).

Question 2

2. Time limit

Answer 2

An essential condition, in both instances G‑V, 1(i) and (ii), is that the disclosure in point must have taken place not earlier than six months preceding the filing of the application. For calculating the six-month period the relevant date is that of the actual filing date of the European patent application, not the priority date (G 3/98 and G 2/99).

Question 3

3. Evident abuse

Answer 3

Regarding instance G‑V, 1(i), the disclosure might be made in a published document or in any other way. As a particular instance, the disclosure might be made in a European application of earlier priority date. Thus, for example, a person B who has been told of A’s invention in confidence, might apply for a patent for this invention. If so, the disclosure resulting from the publication of B’s application will not prejudice A’s rights provided that A has already made an application, or applies within six months of such publication. In any event, having regard to Art. 61, B may not be entitled to proceed with the application (see G‑VI, 2).

For “evident abuse” to be established, there must be, on the part of the person disclosing the invention, either actual intent to cause harm or actual or constructive knowledge that harm would or could ensue from this disclosure (see T 585/92). This must be proven on the balance of probabilities (see T 436/92).

Question 4

4. International exhibition

Answer 4

In instance G‑V, 1(ii), the application must be filed within six months of the disclosure of the invention at the exhibition if the display is not to prejudice the application. Furthermore, the applicant must state, at the time of filing the application, that the invention has been so displayed, and must also file a supporting certificate within four months, giving the particulars required by Rule 25 (see A‑IV, 3). The exhibitions recognised are published in the Official Journal.