Patent Law (UK) - Novelty & Inventive Step Flashcards
An overview of novelty and inventive step for patents in the UK with some elements of European patent law.
What best defines ‘novelty’ in patent law?
Ensures an invention was not part of the state of the art before its priority date.
Explanation: Novelty ensures that the invention is new and not disclosed within the prior art before the priority date
What are the three types of novelty discussed in the UK and EPO contexts?
Absolute, relative, and local novelty are the key types.
Absolute Novelty (UK and EPC): The invention must not have been disclosed anywhere globally.
Relative Novelty (US, but now phased out): Novelty judged within specific contexts.
Local Novelty (still used in some regions): Novelty determined based on activities within a particular locale.
The ‘enablement’ criterion for assessing novelty means that
The prior art must be detailed enough for a skilled person to replicate it.
Explanation: Enablement focuses on whether the prior art provides enough information for a skilled person to perform the invention.
Which test is used in the UK to assess inventive step?
Windsurfing/Pozzoli Test.
Explanation: This is the standard test in the UK, focusing on analysing the inventive step through structured stages.
The ‘state of the art’ includes all prior disclosures worldwide made before the priority date.
True or False
True
Explanation: Under absolute novelty, the state of the art is global and includes all public disclosures before the priority date.
Anticipation cannot occur if the prior art discloses part of the invention but not enough to enable replication.
True or False
True
Explanation: For anticipation, the prior art must both disclose and enable replication of the invention.
The Pozzoli test replaced the Windsurfing test fully in UK patent law.
True or False
False
Explanation: The Pozzoli test restated and clarified the Windsurfing test; it did not entirely replace it.
Mosaicking of prior documents is allowed when assessing novelty.
False
Explanation: Mosaicking is not allowed when determining novelty; each document must be considered independently.
Hindsight should influence the assessment of an inventive step.
True or False
False
Explanation: Using hindsight distorts the objective nature of assessing whether an inventive step exists.
What are the two primary criteria for establishing novelty in the UK?
Disclosure and enablement.
Explanation: The prior art must disclose the invention and provide sufficient details (enablement) for replication by a skilled person.
Briefly explain how the Windsurfing/Pozzoli test operates to assess inventive step.
- Identify the notional “person skilled in the art” and their common general knowledge.
- Define the inventive concept or construe the claim.
- Determine differences between the prior art and inventive concept.
- Assess whether the differences would be obvious to the skilled person or require invention.
What is the importance of overcoming technical bias in establishing inventive step?
Overcoming known misconceptions or biases in the field suggests an inventive step, as the approach departs from what was conventionally considered possible or practical.
How does the Problem-Solution Approach differ from the Windsurfing Test in assessing inventive step?
The Problem-Solution Approach (EPO) emphasises defining the closest prior art, objective technical problem, and solution.
The Windsurfing Test (UK) focuses on identifying the skilled person, inventive concept, differences from prior art, and whether the invention requires ingenuity.
How does the Pozzoli test define the ‘notional person skilled in the art’?
The person is skilled but not inventive.
The person has access to and understands relevant public information.
What was the ruling in ‘General Tire v Firestone Tyre (1972)’ about prior disclosure?
Prior disclosure must be sufficiently detailed for a skilled person to replicate the invention.
