Novelty CONCEPTS Flashcards
Three types of novelty
Absolute novelty (pubn + use anywhere): UK and EPC
Relative novelty (appn anywhere use in jurisdiction): used to be applied in US and China
Local novelty (pubn or use in jurisdiction): used to be applied New Zealand
Priority date
The date on which the novelty of the invention is judged
Prior Art
This means something which existed in the state of the art before the priority date of the invention
Anticipated
This means some piece of prior art exists which affects the novelty of the invention
Possible fetters
Non-disclosure agreement or duty of confidence
Infringement test
“…the matter relied upon as prior art must disclose subject-matter which, if performed, would necessarily result in an infringement of the patent. That may be because the prior art discloses the same invention. In that case there will be no question that performance of the earlier invention would infringe and usually it will be apparent to someone who is aware of both the prior art and the patent that it will do so.”
No awareness requirement.
Synthon (BUT DON’T USE DOCTRINE OF EQUIVALENTS)
Enablement
“Enablement means that the ordinary skilled person would have been able to perform the invention which satisfies the requirement of disclosure.” (equates with sufficiency)
Lord Hoffmann, Synthon v Smithkline
EPO Novelty
Article 54 EPC
(1) An invention shall be considered to be new if it does not form part of the state of the art.
(2) The state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use in any other way, before the date of filing of the European patent application
Types of disclosure
It can be in documents
It can be in meetings
(evidence is a problem here)
Can be in a drawing
Can be on the internet
At the EPO, there may be different standards of proof depending on the nature of the disclosure (lowest a document – highest oral disclosure)
Unpublished applications
s2(3) “The State of the art in the case of an invention to which an application for a patent or a patent relates shall be taken also to comprise matter contained in an application for another patent which was published after on or after the priority date, if the following conditions are satisfied, that is to say-
(a) that matter was contained in the application for that other patent both as filed and as published; and (b) the priority date of that matter is earlier than that of the invention
Non prejudicial disclosures UK
Patents Act 1977
(4) For the purposes of this section the disclosure of matter constituting an invention shall be disregarded in the case of a patent or an application for a patent if occurring later than the beginning of the period of six months immediately preceding the date of filing the application for the patent and either—
(a) the disclosure was due to, or made in consequence of, the matter having been obtained unlawfully or in breach of confidence by any person—
(i) from the inventor or from any other person to whom the matter was made available in confidence by the inventor or who obtained it from the inventor because he or the inventor believed that he was entitled to obtain it; or
(ii) from any other person to whom the matter was made available in confidence by any person mentioned in sub-paragraph (i) above or in this sub-paragraph or who obtained it from any person so mentioned because he or the person from whom he obtained it believed that he was entitled to obtain it;
(b) the disclosure was made in breach of confidence by any person who obtained the matter in confidence from the inventor or from any other person to whom it was made available, or who obtained it, from the inventor; or
(c) the disclosure was due to, or made in consequence of the inventor displaying the invention at an international exhibition and the applicant states, on filing the application, that the invention has been so displayed and also, within the prescribed period, files written evidence in support of the statement complying with any prescribed conditions.
Non prejudicial disclosures EPO
Art. 55 EPC
(1) For the application of Article 54, a disclosure of the invention shall not be taken into consideration if it occurred no earlier than six months preceding the filing of the European patent application and if it was due to, or in consequence of:
an evident abuse in relation to the applicant or his legal predecessor, or
the fact that the applicant or his legal predecessor has displayed the invention at an official, or officially recognised, international exhibition falling within the terms of the Convention on international exhibitions signed at Paris on 22 November 1928 and last revised on 30 November 1972
