#10543 - Patent Law Patentability - Intellectual Property Law

Requirements for a patentable invention

Novelty

• For an invention to be patentable it must be new

  • PA s1(1)(a)

  • EPC 2000 Art 52(1)

• An invention is not new if it does not form part of the “state of the art” (PA s2(1), EPC Art 54(1))

• State of the art – broadly framed – includes all matter that is available anywhere in the world before the priority date of the invention

• Where an invention is disclosed or “anticipated” by the state of the art, a patent will not be granted, or, if it has been granted, the parent is liable to be revoked

Novelty v inventive step

• Novelty requires that the invention be “qualitatively different” from what has previously been disclosed – that the technical information disclosed by the patent is not already available to the public

• Novelty is diff to the requirement that the invention must have involved an “inventive step” – this is a qualitative examination of whether the contribution is creative enough to warrant a monopoly

Why do we have novelty?

• Novelty ensures that patents are not used to stop people from doing what they had already done before the patent was granted

  • This “right to work” argument has been modified as a result of how novelty is determined

• Overall rationale for the grant of patents is supported by novelty – that the public is willing to pay the costs of patenting if and only if they are able to get access to information that would not otherwise have been available to them

  • Contract analogy – novelty provides the consideration necessary to warrant the patent being granted in the first place

• Britain’s entry into the EPC introduced some changes in the way the novelty requirement is applied in the UK

  • The 1977 Act and EPC operate on the principle of “objective novelty” so as to avoid subjective judgments that lead to uncertainty

  • Both British and European law have adopted the principle of “absolute novelty” – meaning that the novelty of an invention is judged against all the information which is available at the priority date of the invention, irrespective of where the info was released or the form that it was released in

    • Criticised – allowing obscure materials to anticipate – harsh results

    • BUT absolute novelty – provides a “bright line” test thus “avoiding subjectivity and most questions of degree” - Milliken Denmark AS [1996]

The task of determining whether an invention is novel

• What is the invention?

• What information is disclosed by the prior art?

• In light of the above, is the invention novel/ is the invention part of the state of the art?

What is an invention?

• This Q has received little attention

What information is disclosed by the prior art?

• What material forms part of the state of the art?

• State of the art defined in broad and inclusive terms to include all matter (products, process, information) which, at the priority date of the application, has been made available to the public by written or oral description, by use or in any other way – PA s2(2), EPC Art 54(2)

• No geographical limits on where the state of the art must be disclosed – info that is available anywhere in the world

• No restrictions on the mode of disclosure – info part of the state of the art irrespective of how it is made available to the public

• No requirements on how widely the info must be published – a single copy of a document is sufficient

• Material is part of the state of the art if it is capable of being accessed – no need to demonstrate a person actually had access to the info, only that if they wanted to, they could have

• The date at which novelty is assessed = the priority date of the invention – state of the art only includes info made available before this date

  • In contrast with other patent regimes, applicants for UK and European patents are not provided with a “grace period” – a period prior to filing where they are able to practice their inventions

  • Consequently, patents are frequently anticipated and rendered invalid for want of novelty as a result of the applicant’s own acts and disclosures

  • Priority date is therefore important because it is the date from when inventors are able to exploit their inventions without jeopardising potential patents

  • NOTE - US used to require novelty at the date of invention not the date of application

    • Leahy-Smith America Invents Act 2011 adopted the date of application

    • BUT US still have a “grace period” – during which a scientist can disclose his invention without depriving a later patent application of novelty

    • America Invents Act 2011 – 102(2)

      • 2) EXCEPTIONS.—‘(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.—A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—

      • (A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor

    • SO the invention will not enter into the state of the art by virtue of your own disclosure

    • Benefits of this – the fact that scientists don’t have to keep their inventions secret allows for more scientific discussion

    • The Manchester Manifesto: Who owns science? – “Restrictions on access to information at any stage of the innovative process obstruct the flow of scientific information and thereby impede scientific progress”

• Material obtained unlawfully or disclosed into the public as a breach of confidence is not taken into account

• Info is also excluded from the state of the art where the disclosure was sue to the inventor displaying the invention at an “international exhibition”

• BUT these exclusions only apply to disclosures that are made in the 6-month period immediately preceding the date of filing

What info is disclosed by the prior art?

• The info disclosed by the prior art is restricted to the info that a person skilled in the art is able to derive form the prior art in Q

• Documents

  • Documents are interpreted as if they were being read at the date of their publication

  • The info available is that which a person skilled in the art would derive from reading the document in light of common general knowledge – no ability to extend the meaning of the doc beyond that which would be provided by a literal reading BUT he can correct obvious mistakes

  • The info must be drawn from a single document – it is not possible to combine together items in the prior art

• Products

  • Where the product is the same as the invention – few problems arise

  • Task of interpretation is harder where the technical info necessary to anticipate the invention is not immediately apparent from looking at the product but can only be obtained if the product is analysed

  • It has long been recognised that the info disclosed by a product is not limited to the info that is immediately apparent from looking at the product

  • Info available to the public includes the info that a skilled person would be able to derive from the product if they analysed or examined it

  • Any info obtained as a result of analysis by a skilled person must be obtained without undue burden or without the need to exercise any additional inventive effort – Availability to the Public Decision [1993]

    • If the person skilled in the art needed to embark on exploratory research to reveal the info then the info would not form part of the state of the art

Is the invention novel?

• If the prior art and the invention are identical/ the prior art leads directly to the patented invention then the Q is easy

• Task is harder where there is a gap between the prior art and the invention

• This is because the same thing may be known by the public in a number of different ways – things can be described differently

• Merrell Dow v Norton [1996] HL

  • Lord Hoffmann – this is essentially an epistemological question – what does it mean for the public to know something so that it can anticipate?

  • The problem is that there is often a marked difference between something being “known” by the general public and being known for the purposes of patent law --- Lord Hoffmann’s comments about the specific epistemological basis of patent law

• Hill v Evans (1962) – Lord Westbury LC

  • “I apprehend the principle is correctly thus expressed: the antecedent statement must be such that a person of ordinary knowledge of the subject would at once perceive, understand and be able practically to apply the discovery without the necessity of making further experiments and gaining further information before the invention can be made useful. If something remains to be ascertained which is necessary for the useful application of the discovery, that affords sufficient room for another valid patent...”

• General Tire [1972] – C of A

  • “If the prior inventor's publication contains a clear description of, or clear instructions to do or make, something that would have infringed the patentee's claim if carried out after the grant of the patentee's patent, the patentee's claim will have been shown to lack the necessary novelty, that is to say, it will have been anticipated.

  • If, on the other hand, the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee's claim, but would be at least as likely to be carried out in a way which would not do so, the patentee's claim will not have been anticipated, although it may fail on the ground of obviousness. To anticipate the patentee's claim the prior publication must contain clear and unmistakeable directions to what the patentee claims to have invented. A signpost,...