Legal Requirements for patentability 1

Question 1

Novelty principle

Answer 1

1. claimed invention must not have been made available to the public before filing data (or priority date) of the invention.
2. claimed invention not novel if all elements (features) are found in a single prior art reference (e.g. article in technical journal or earlier published patent)
3. Novel as long as one feature or element is found in the claimed invention but NOT in the single prior art reference.

Question 2

Lack of novelty

Answer 2

1. Anticipation
2. anticipating reference contains all elements or features of a claimed invention –> invention as claimed is said to have “ been anticipated by” the reference. (e.g. chair with four legs…)
3. all the elements must be present in the single reference –> examiner may not combine multiple references to argue invention is not novel.

Question 3

“Made available to the public”

Answer 3

1. If claimed invention was shared with or accessible to any member of the public who is free to disclose the knowledge to others.
2. Not necessary to prove
3. Helpful to conclude a non-disclosure agreement to preserve novelty.

Question 4

Geographical scope and form of prior disclosure

Answer 4

1. May very slightly from jurisdiction to jurisdiction.
2. Many countries consider public disclosure anywhere in the world –> represents valid prior art against a claimed invention. (oral disclosure, publication and use or display of the claimed invention, including at exhibitions, on social media and online.

Question 5

Prior-filed and later published patent application

Answer 5

1. “prior filed, later published” patent application –> becomes prior art in some jurisdictions.
2. aka secret prior art or fictive prior art.
3. Even if a prior application is published after the filing date of the application being examined, it can still become part of the prior art.
   - In addition to the prior art made available to the public before the filing (or priority) date, a patent application filed in the same country before the filing (or priority) date of the application being examined, but published only thereafter, also becomes part of the prior art in many jurisdictions.
4. e.g. In EU and Japan; the prior-filed, later-published patent application –> only for examining novelty
5. US–> prior filed, later published patent application is taken into account for examining both novelty and inventive step.
6. US and Japan –> prior-filed, later-published patent application is part of the prior art only if it is filed by a third party. i.e. any prior-filed, later published application filed by the same inventor is excluded from prior art.

Question 6

Grace period (non-prejudicial disclosure)

Answer 6

1. Exception to inventor’s own disclosure of their invention/ publication of inventor’s own research results before filing a patent application / destruction of novelty
2. For limited time, inventor’s own disclosure about their invention cannot become prior art against their patent application (i.e. is non-prejudicial).
   - types and duration of disclosure covered by the grace period vary
   
   • e.g. US/Japan –> comprehensive grace period; any type of disclosure incl. commercial disclosure made by the inventor or applicant within one year prior to the filing date is considered nonprejudicial and not taken into consideration in determining novelty and inventive step.
     - e.g. Europe under the EPC and China –> grace period applies only exceptionally; disclosure of the invention by the inventor or applicant destroys the novelty of the invention except in case of disclosure at an international exhibition or similar.

Question 7

Generic concept and specific example

Answer 7

generic claims + specific prior reference = destroys novelty
vs.
specific claims + generic prior art reference = novelty maintained if reference is proved to have a technical feature that distinguishes it from subsets of the “conductive material”.