Novelty, inventions

The legally trained member of the interdisciplinary committee should provide insight as to the significance of the technological advance and as to whether any commercial product ultimately derived from the invention could be protected by an issued patent. Another important function of this person is to determine the scope of the invention based on preceding events, pubHcations, or activities which may have otherwise limited the breadth of the invention. To this end, U.S. law requires that an invention satisfy a number of prerequisites or requirements before issuing a patent novelty, nonobviousness, utiHty, and disclosure. 

A fundamental statutory prerequisite to patentabiHty is novelty. A lack of novelty occurs when each and every element of the invention, as it is claimed, is found in a single disclosure which occurs before the date of invention. Such a disclosure may occur in any of a number of forms. To be an adequate disclosure, it should be catalogued or inventoried as a book might be in a reference Hbrary and open to pubHc dissernination. The novelty requirement presents the inventor with an extensive Hst of "cans" and "caimots." Unfortunately, the natural course of research and development often leads to activities which are much more readily categorized as "caimots" than "cans." Ultimately these activities may even proscribe the issuance of a patent if an appHcation is not filed in a timely fashion. 

Even in countries which are not signatories to either the PCT or various regional conventions provided around the world, patent appHcation examination generally foUows a fairly standard pattern. After the first national, home appHcation is filed, subsequent apphcations may then be filed in other countries, within the 12-month time period if such a grace period is provided. If this grace period is not provided, the patent appHcation(s) which are to be filed in non-Paris Convention Countries have to be filed before any event occurs that may destroy the novelty of the invention. Eurther, under U.S. 

Patent laws provide for several stages in the life of an application for a patent on an invention. The pattern followed by patent laws in effect in most industrialized countries during the nineteenth and early twentieth centuries, and still in effect in the United States in 1995, calls for the examination of all patent appHcations to certify that the claimed invention meets the national standards for novelty, usehilness, and inventiveness. The owner of the technology to be patented files appHcation papers that include a specification containing a description of the invention to be patented (called the disclosure) and claims defining the limits of the invention to be protected by the patent, a formal request for the issuance of a patent, and fees. Drawings of devices and apparatuses, electrical circuits, flow charts, etc, are an important part of the disclosures of most nonchemical and many chemical patents. 

Novelty searches are not necessarily limited to patent information. The anticipation of a purportedly novel idea can occur in journals, books, magazines, etc. Thus, the potential scope for a novelty search is essentially infinite, and one of the challenges to the searcher is to devise an effective strategy whose cost is commensurate with the potential value of the invention. 

The people of London and Paris in Victorian times (the second half of the nineteenth century) were always keen to experience the latest fad or novelty, just like many rich and prosperous people today. And one of their favourite new inventions was ice cream and sorbets made of frozen fruit. 

A biological patent is a patent on an invention in the field of biology that by law allows the patent holder to exclude others from making, using, selling, or importing the protected invention for a limited period. The applicant for a patent must demonstrate novelty, utility or usefulness and non-obviousness. An important distinction exists in patent law between discoveries, which are not patentable, and inventions. In contrast to commodity patents, biological patents have ethical and social impact. 

Novelty, in the patent law sense, is not required for a trade secret. W. R. Grace Co. v. Hargadine, supra, 392 F.2d, at 14. Quite clearly discovery is something less than invention. A. O. Smith Corp. v. Petroleum Iron Works Co., 73 F.2d 531, 538 (CA6 1934), modified to increase scope of injunction, 74 F.2d 934 (1935). However, some novelty will be required if merely because that which does not possess novelty is usually known secrecy, in the context of trade secrets, thus implies at least minimal novelty.. . . ... 

To be patentable, an invention must be new and useful, as well as non-obvious. The Patent Office detmnines novelty by searching prior patents and publications. The patent must also contain a written description to enable any person skilled in the art to which it pertains. .. to make and use the invention. Non-obviousness is determined in light of the prior art and involves asking whether a person skilled in the art would consider the invention to be obvious. ... 

In general, a patent can be granted for an invention which is new (the novelty requirement), is not obvious (the inventive step requirement), is commercially or industrially useful (the utility requirement) and is not otherwise barred by law from being the subject of a patent (for example, at least at the European Patent Office (EPO) plant and animal varieties are not patentable, and inventions the publication or exploitation of which are contrary to morahty are not patentable). The requirements for a patentable invention are outlined in Table 12.1. 

The product or process invention claimed in a patent must have an inventive step that is to say the invention must not be obvious to a person skilled in the art . The rationale for this is to prevent novel, but trivial or obvious, variants of a known product or process from being given a monopoly. Inventive step is a separate requirement from novelty the question Is there an inventive step is only relevant once the novelty ol a claimed invention has been established. At least at the EPO, lor the purposes of inventive step, and for the purposes of sufficiency of disclosure (see below) the fictional person skilled in the art is deemed to have the same degree of knowledge, and for bicatalysis inventions is likely to be a team of suitably qualified people e g. one Ph.D. researcher assisted by two laboratory technicians fully acquainted with the known techniques relevant to the technolog> in question. 

The procedure for obtaining a patent is typically started by filing a national patent application in a patent office of a country which is party to the Paris Convention (an international treaty agreeing certain reciprocal patent rights). This application can provide a so-called priority date for the invention disclosed in this priority application such that the patentability of the invention is assessed as of that date. This priority date can given to further patent applications filed in other Paris Convention territories provided that these further patent applications are filed within 12 months of the first priority application. A patent application must be filed before any public disclosure of the invention since, in most territories, public disclosures before the priority date can be used to attack the novelty and non-obviousness of an invention described in a patent application. 

Define the terms novelty, inventive step, verbal disclosnie, obviousness, claim, inventor, assignee, foreign equivalent, prior art, priority date, provisional (preliminary) application, examination, opposition. 

Explosives of a new type were introduced in 1871 by Hermann Sprengel, the inventor of the mercury high-vacuum pump, who patented 30 a whole series of mining explosives which were prepared by mixing an oxidizing substance with a combustible one in such proportions that their mutual oxidation and de-oxidation should be theoretically complete. The essential novelty of his invention lay in the fact that the materials were mixed just before the explosive was used, and the resultant explosive mixture was... 

This means that an invention is considered new only if it does not form part of the broadly defined public state of the art before the date of filing of the European patent application (or the corresponding priority-establishing application). The state of the art in the sense of the EPC is not locally restricted. When examining the claims of the patent application with regard to their novelty, the European Patent Office considers prior publication of the invention irrespective of whether the publication occurred in one of the member states of the EPC or elsewhere. 

The different definitions of novelty in these important patent systems have far-reaching consequences. An invention may be novel according to U.S. law, even if it lacks absolute novelty as applied by the EPC. For example, if an inventor describes the invention in a printed publication, he must apply for a patent in the United States before one year (according to 102 (b)) has passed - otherwise any right to a U.S. patent is lost. In contrast, the inventor must file his patent application on the publication date, at the latest, if he wants to secure patent protection under the European Patent Convention and the national patent laws of many other countries. 

The issue of inventiveness is more complicated and ambiguous than the issue of novelty. It depends for example on the state of the art, the skill of the person skilled in the art, whether the invention uses well-known techniques, whether the invention solves the problem in the prior art only in a further way employing techniques that are known as such, and other issues. 

Apart from the essentials of novelty, unobviousness, and utility discussed above, further challenges require special attention when seeking patent protection. The invention should be described in such a manner as to comply with both the written-description and the enablement requirement. These requirements are contained in 35 U.S.C. 112, which states that the specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same. .. . Similar regulations exist in other patent laws, as exemplified by Articles 83 and 84 EPC. 

As discussed in detail above, essential patentability requirements are novelty and inventiveness with respect to the prior art. In filing a patent application, it is therefore desirable that its content as claimed is at least novel with respect to the prior art. The question of whether an invention is obvious, considering the prior art, is often difficult to assess and should be subject to discussion with the corresponding patent authority. To avoid inventing subject matter already included in the prior art, inventors should have a clear knowledge and understanding of the state of... 

Last, the use of a laboratory notebook should be controlled, for example, by a central department. Under no circumstances should it be treated as a freely available publication. This would be in conflict with the above-discussed patentability requirements of novelty and inventiveness. 

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