Novelty (patent)

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Novelty is a patentability requirement. An invention is not new and therefore not patentable if it was known to the public before the date of filing of the patent application, or before its date of priority if the priority of an earlier patent application is claimed. The purpose of the novelty requirement is to prevent the prior art from being patented again.

Rationale[edit]

A patent grants an inventor a legally enforceable monopoly over their invention. This means that others can be legally restrained from exploiting the invention. It is not the intention of the patent system to deny anyone what they have been free to do before someone claims an invention. For example, one cannot patent the wheel, as that would exclude others from doing what they had previously been free to do. The legal test is that the invention must be something new, i.e. it must possess "novelty". The invention of the wheel is not new, because the wheel already forms part of the prior art.

Specific concepts[edit]

Grace period[edit]

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.

In other countries, including European countries, any act (or almost 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.

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.

Local novelty[edit]

Local novelty only regards publications, uses or sales that have taken place within that jurisdiction to be novelty destroying.

Jurisdictions[edit]

Canada[edit]

In Canada, the requirements for novelty are codified under section 28.2 of the Patent Act (R.S.C., 1985, c. P-4):[1]

28.2 (1) The subject-matter defined by a claim in an application for a patent in Canada (the “pending application”) must not have been disclosed
(a) more than one year before the filing date by the applicant, or by a person who obtained knowledge, directly or indirectly, from the applicant, in such a manner that the subject-matter became available to the public in Canada or elsewhere;
(b) before the claim date by a person not mentioned in paragraph (a) in such a manner that the subject-matter became available to the public in Canada or elsewhere;
(c) in an application for a patent that is filed in Canada by a person other than the applicant, and has a filing date that is before the claim date;
...


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.[2] 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.[3]

There is an eight-pronged test to determine whether anticipation occurs in Canada. The prior art must:

  1. give an exact prior description;
  2. give directions which will inevitably result in something within the claims;
  3. give clear and unmistakable directions;
  4. give information which for the purpose of practical utility is equal to that given by the subject patent;
  5. convey information so that a person grappling with the same problem must be able to say "that gives me what I wish";
  6. give information to a person of ordinary knowledge so that he must at once perceive the invention;
  7. in the absence of explicit directions, teach an "inevitable result" which "can only be proved by experiments"; and
  8. satisfy all these tests in a single document without making a mosaic.[4]

The current test now requires that only 1 of the 8 tests be fulfilled in order to find anticipation.[5]

European Patent Convention[edit]

Under the European Patent Convention (EPC), European patents shall be granted for inventions which, among other things, are new. The central legal provision governing the novelty under the EPC is Article 54 EPC.

United States[edit]

In the United States the four most common ways in which an inventor will be barred under Section 102 are:

  1. by making the invention known or allowing the public to use the invention; or
  2. having the invention published in a fixed medium (such as in a patent, patent application, or journal article); or
  3. if the invention was previously invented in the U.S. by another, who has not abandoned, suppressed, or concealed the invention, or
  4. 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.[6]

Prior art search[edit]

Main article: prior art

To assess the novelty of an invention, a search through what is called the 'prior art' is usually performed, the term "art" referring to the relevant technical field. 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 any web search engine. 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 claimed invention.

See also[edit]

References[edit]

  1. ^ "Patent Act (R.S.C., 1985, c. P-4)". s.28.2. 
  2. ^ Patent Act, RSC 1985, c P-4, s. 28.2(1)(a) and (b).
  3. ^ David Vaver, Intellectual Property Law: Copyright Patents Trade-Marks, 2d ed (Toronto: Irwin Law Inc., 2011) at 321.
  4. ^ Reeves Brothers Inc. v. Toronto Quilting & Embroidery Ltd., 43 C.P.R. (2d) 145.
  5. ^ Tye-Sil Corp. v. Diversified Products Corp. (1991), 35 CPR (3d) 350 at 361, 362 (FCA)
  6. ^ MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008)

External links[edit]