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When is an invention new? Assessment of novelty

Written by Michael Coyle on 28 August 2007

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When is an invention new? Assessment of novelty

The requirement of novelty

Under s. 1(1) of the Patent Act 1977 (the ‘Act’):

A patent may be granted only for an invention in respect of which the following conditions are
satisfied, that is to say—

(a) the invention is new;

(b) it involves an inventive step;

(c) it is capable of industrial application;

(d) the grant of a patent for it is not excluded by subsections (2) and (3) below;

Therefore for an invention to be patentable it has to be, among other things, new.

What is novelty?

Novelty is defined in the Act by combination of s. 2(1) and (2):

- Section 2 (1) states that an invention shall be taken to be new if it does not form part of the
state of the art

- Section 2 (2) defines the state of the art as follow: The state of the art in the case of an
invention shall be taken to comprise all matter (whether a product, a process, information about either, or anything else) which has at any time before the priority date of that invention been made available to the public (whether in the United Kingdom or elsewhere) by written or oral description, by use or in any other way

Therefore if the invention has been made available to the public before its inventor seeks a
patent for it, the invention is no longer new and could fail to be registered.

What constitute being made available to the public?

For an invention to have been made available to the public there must be:

 A disclosure = the information given by the inventor must have been made available to at least one member of the public who was free in law and equity to use it, see Genentech Inc.’s Patent (1989), and

‚ This disclosure must be an enabling one = the information obtained must be sufficient for the
man skilled in the art (at the relevant date) to implement the disclosure, see Asahi’s application
(1991) and Biogen Inc v. Medeva (1997)

The different possibilities of being made available to the public

  • Make available by oral disclosure
  • Make available by documents

- These documents must be understood by a person of ordinary knowledge (= person skilled
in the relevant art) at the relevant date, see PLG Research Ltd v. Ardon International (1993)

- ‘Mosaic’ of publications: it is not legitimate to piece together a number of prior documents in order to produce an anticipation of the invention, see Von Heyden v. Neustadt (1880)

Make available by prior use

Exceptions as to what constitutes the state of the art

Under s. 2 (4) of the Act, disclosure of any matter that constitutes the invention within six months prior to the filling date does not constitute an enabling disclosure if:

(a) the disclosure was due to, or made in consequence of, the matter having been obtained unlawfully or in breach of confidence by any person—

(i) from the inventor or from any other person to whom the matter was made available in confidence by the inventor or who obtained it from the inventor because he or the inventor believed that he was entitled to obtain it; or

(ii) from any other person to whom the matter was made available in confidence by any person mentioned in sub-paragraph (i) above or in this sub-paragraph or who obtained it from any person so mentioned because he or the person from whom he obtained it believed that he was entitled to obtain it;

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