Novelty and Inventive step Flashcards
(43 cards)
What is the priority date?
The priority date is the date on which the novelty of the invention is judged.
What is the prior art?
Something that exists in the state of the art before the priority date of an application.
When does the prior art anticipate an invention? (UK)
When it provides an enabling disclosure.
Asahi’s Application [1991] RPC 485
What are the two basic elements for novelty? (UK)
Enablement and disclosure.
Synthon v. SmithKline [2005] UKHL 59
How is a public disclosure defined? (UK)
A disclosure is made public if it is disclosed to at least one member of the public free in law and equity to use it.
Is it necessary to see a disclosure for it to be considered disclosed? (UK)
It is not necessary to actually see an invention for it to be made public, this is the library book analogy.
Lux Traffic v. Pike signals [1993] RPC 107
However, there may be a difference between and observing an invention for example if it is disclosed to a toddler or an empty lecture theatre it is not considered to be disclosed.
Folding Attic Stairs v. Loft Stairs Company [2009] EWHC 1221 (Pats).
E Mishan & Sons v. Hozelock [2019] EWHC 991 (Pat)
When should a document be construed? (UK)
At the priority date.
General Tire and Rubber v. Firestone Tyre [1972] RPC 457
SmithKline Beecham v. Apotex [2005] FSR 23
What is the infringement test for disclosure? (UK)
If using an earlier invention necessitates infringement of the later patent, the later patent is not novel. Patent infringement does not require awareness of infringement. Simply performing the infringing act is enough.
Lord Hoffman, Synthon v. SmithKline [2005] UKHL 59, [22]
Qualified in Eli Lily v. Actavis UK [2017] UKSC 48, Generics (UK) Ltd (t/a Mylan) v. Yeda [2017] EWHC 2629 (Pat) to exclude equivalents.
How is enablement defined? (UK)
Enablement means that the ordinary skilled person would have been able to perform the invention which satisfies the requirement of disclosure.
Lord Hoffman, Synthon v. SmithKline [2005] UKHL 59 [26]
Enablement for novelty therefore equates with sufficiency in the application itself: see section 14(3) and 72(1)(c) of the PA 1977.
But… Schlumberger Holdings Ltd v. Electromagnetic Geoservices AS [2010] EWCA Civ 819 (the art might change by reason of the patent and so the skilled person may be different)
Requirements for enable will vary depending on the invention itself.
The disclosure does not need to be so totally enabling as to avoid “the ordinary methods of trial and error which involve no inventive step and generally are necessary in applying any discovery to producing a practical result.
Van der Lely v. Bamfords [1963] RPC 61, 71, HL
How does the UK approach Mosaicking?
Each document must be interpreted on its own and so it is not allowed to piece together prior art documents to destroy novelty.
Von Heyden v. Neustadt (1880) 58 LJ Ch. 126
But where a series of papers refer to each other so that a person reading one can find each of the others, this is not an impermissible mosaic and can be used to attack novelty.
Sharpe & Dohme v. Boots Pure Drug (1927) 44 RPC 367
Documents cannot be combined unless there is positive evidence that they are incorporated by reference.
What does Article 54 EPC refer to?
(1) An invention shall be considered to be new if it does not form part of the state fothe 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.
When is novelty assessed? (EP)
Novelty is assessed at the beginning of the date of filing (12:01am).
Thus, something filed on the priority date (even if it was filed before the application in question, does not anticipate.
T 123/82 Polyurethane Plastics / BAYER [1979-85] EPOR B575 at [r 9]
When are prior art documents construed? (EP)
Non-patent documents are construed at the date of their publication.
T 205/91 Continuous production of inorganic based material / FRANHAUSER-GELLSCHAFT (unpublished*) 16 June 1992 at [r 4.4]
Patent documents are construed at the date of filing of the earlier application.
T 233/90 Magnetic recording medium / KONICA (unpublished*) 8 July 1992 at [r 3.3]
How does the EPO approach mosaicking?
The EPO adopts the same approach as the UK.
It is not permissible to combine separate items belonging to different embodiments described in one and the same document unless such combination has been suggested.
T 305/87 GREHAL / Shear [1991] OJ EPO 429
If a document refers explicitly to another document as providing more detailed information on certain features, the teaching of the latter is to be regarded as incorporated into the document containing the reference. Provided that the document referred to was available to the public on the publication date of the document containing the reference.
T 153/85 AMOCO CORP / Alternative claims [1988] OJ EPO1
When is an invention considered to be disclosed?
When all elements of the claimed invention have been disclosed to one member of the public.
G 2/88 Friction reducing additive / MOBIL OIL III [1990] OJ EPO 93
No requirement that it is disclosed to a minimum number of people (cf trade secrecy)
T 165/96 Prefading / CAYLA [2002] EPOR 93
No obligation of secrecy.
T 482/89 Single sales / Telemechanique [1992] OJ EPO 646
The sale of an article to a member of the public is sufficient to amount to disclosure.
T 482/89 Power supply unit/ Telemechanique [1992]OJ EPO 646 at [r 3]
The purchaser does not need to be a skilled person.
T 969/90 Tube electronique / Thompson (unpublished*) 12 May 1992
Where can a disclosure be made? (EP)
Documents, meetings, drawings, internet. There are different standards of proof depending on the nature of the disclosure, for example a low standard will be needed for a document and a high standard for an oral disclosure.
How is prior art construed? (EP)
The disclosure must be enabling (meaning enabling a skilled person to perform the invention).
T 206/83 Enabling disclosure/ICI [1987] OJ EPO 5
The invention must therefore be disclosed clearly and unambiguously.
T 450/89 Electroless plating/ENTHONE [1994] EPOR 326
It may also be clearly and unambiguously implied in the disclosure.
T 59/86 Friction reducing additive/MOBIL OIL IV [1991] OJ EPO 561
It may also be implicitly revealed if when carrying out the teaching of the prior art document, the skilled person would inevitably arrive at the claimed invention.
Is actual sight of an invention necessary for it to be considered to be disclosed? (EP)
A document which is unpublished but available on request amounts to disclosure for the purposes of novelty.
T 61/95 MONFORTS (unpublished)
It is necessary to show that there was a realistic possibility that a skilled person saw the disclosure, it is not necessary to show they actually saw it.
T 84/83 Rear view mirror / LUCTENBERG [1979-1985] EPOR C796
But disclosure to person who does not understand the invention is not making available to the public.
T 877/90 T-cell growth factor/HOOPER [1993] EPOR 6
Something does not anticipate when it was made secretly and secrecy can exist in both large and small groups.
T 830/90 Secrecy / MACOR [1994] OJ EPO 713
What does the identity test require? (EP)
There must be complete correspondence between all technical features of the application in suit and the prior art.
T 177/83 Fibre composites / BAYER [1979-85] EPOR C884
Correspondence of the essential features is therefore not enough.
T 411/98 Training Pant / Kimberly-Clark [2002] EPOR 31
A skilled person can, as a result of the common knowledge, correct minor errors if they do not affect the clarity or completeness of the disclosure.
T 171/84 Trial and error / Air Products [1986] OJ EPO 95
Which disclosures are excluded from being prior art? (UK)
Unpublished patent applications: Section 2(3) of the Patents Act 1977
For a patent document to count as prior art for novelty, it has to have been both filed and published on the priority date of the application in question. A patent application must have the capacity to become a UK patent e.g. it must be filed at the UKIPO, EPO or WIPO.
Additionally, in the event of a breach of confidence, a 6 month priority is allowed, and there is a 6-month priority allowed after certain international conferences (although this is rare and applies to an extremely limited number of conferences).
Which disclosures are excluded from being prior art? (EP)
Article 54(3) EPC (3) Additionally, the content of European Patent Applications as filed, of which the dates of filing are prior to the date referred to…. and were published… on or after that date, shall be comprised in the state of the art.
Additionally, in the event of a breach of confidence where there is evidence of abuse, a 6 month priority is allowed, and there is a 6-month priority allowed after certain international conferences (although this is rare and applies to an extremely limited number of conferences).
What is the basic test for inventive step? (UK)
Section 3 PA 1977
An invention shall be taken to involve an inventive step if it is not obvious to a person skilled in the art, having regard to any mater which forms part of the state of the art by virtue only of section 2(2) above (and disregarding section 2(3) above).
What is the basic test for Inventive step? (EP)
Article 56 EPC
An invention shall be considered as involving an inventive step, having regard to the state of the art, it is not obvious to a person skilled in the art. If the state of the art also includes documents within the meaning of Article 54(3) EPC, these documents are not to be considered in deciding whether there has been an inventive step.
What is the old “Windsurfing” test?
There are four steps for assessing whether something is obvious:
(1) the first is to identify the inventive concept embodied in the patent in suit;
(2) next, the court has to assume the mantle of the person skilled in the art at the priority date and to impute to him what was, at the time, common general knowledge in the art in question;
(3) the third step is to identify what, if any differences exist between the matter cited in the prior art and the claimed invention; and
(4) finally, the court has to ask itself whether, viewed without any knowledge of the alleged invention, those differences constitute steps which would have been obvious to the skilled person or whether they require any degree of invention.
