Novelty Flashcards
(26 cards)
According to Section 2(1) an invention is new if it doesn’t…
…form part of the state of the art.
According to Section 2(2) the state of the art comprises…
All matter made available to the public before the priority date of the application.
obtained
According to Section 2(4a), a disclosure within the 6-month period before filing is not novelty-destroying if the disclosure was…
due to or resulted from the invention being obtained unlawfully/in breach of confidence i) from the inventor or anyone holding the invention in confidence ii) from anyone to whom the matter was disclosed to in confidence by the above people
According to Section 2(4b) Disclosure within 6-month period before filing is not novelty-destroying if the disclosure was…
made in breach of confidence, by anyone already holding the invention in confidence, or to whom it was disclosed in confidence.
According to Section 2(4c) Disclosure within 6-month period before filing is not novelty-destroying if the disclosure was…
due to or resulted from the invention being displayed at an international exhibition.
Under section 2(4c) what must the applicant do upon filing to prevent display at an international exhibition with the preceding 6 months count as disclosure ?
Provide written statement confirming it was displayed as such.
What qualifies as novelty-only/secret prior art under S2(3)?
Prior art having an earlier priority date but published after the priority date of a new application - counts as novelty-destroying only.
What is the purpose of S2(3) regarding novelty-only/secret prior art?
Prevent double patenting.
Applications from which jurisdictions are considered S2(3) art?
GB applications (except abstract) EP applications
PCT applications entering GB NP
PCT applications entering EP RP.
Does PCT(GB) count as a “filing in the UK” under section 2(4)
Yes - but if a wrong disclosure is made, filing in another jurisdiction within 6 nmonths will not save the disclosure counting as prior art.
What is the defintion of Enablement
A patent must sufficiently disclose the invention so that it can be performed by a person skilled in the art.
What two things are required for anticipation in patent law?
Prior Disclosure
Enablement
Which Case Law set the precedent for dealing with disclosure and enablement separately?
SmithKline Beecham Plc’s (Paroxetine Methanesulfonate) Patent [2006] RPC 1
The test for enablement of a prior disclosure for the purpose of anticipation is the same as the test for enablement of the patent for the purpose of …
Sufficiency
How is a claim to a product obtained by a process construed?
As as a claim to the product itself.
A specific range of parameters encompassed within a disclosed range is inventive when…
there is no hint to that specific range of parameters in the disclosure.
Can something still be novel if a disclosure gives clear instructions to NOT do what is claimed? [Union Carbide Corp v BP Chemicals Ltd [1998] RPC 1]
yes
What is Rule 5(1)?
Section 2(4)(c) statement must be written
What is the deadline for submitting the 2(4c) statement and evidence under Rule 5(2)?
4 months after the filing date
When does Rule 5 not apply?
if Rule 67(2) applies (special cases for earlier applications)
What is the required evidence under Rule 5(4)?
a) A certificate from the exhibition authority (date); and
b) an authenticated statement identifying the invention displayed.
When is an application not validly published?
If an application is published having had a request for withdrawal received too late to prevent pulication.
