What is novelty?
In order to be eligible for patenting, the invention must be new and no other person may have a prior patent application for it. The invention is considered to be new, if the prior art does not include any solution that comprises all general features of the invention.
The works that are valuable to society are those that are new worldwide. The public has no interest in a creation that can be produced on the basis of publicly available information anyway.
It can happen that no such information was published earlier and the inventor does in fact create something that has never been published before, but another inventor has priority. Society is quite generous in such cases, as it certainly appreciates relative novelty. Anyone can find himself in such a situation and, at least in theory, who is granted exclusive rights is pretty much the same for society. It is obvious that citizens would not pay two licence fees for a double invention, so patent will be granted only to one of the two inventors.
As there are rules deciding which one of two cars arriving at an intersection at the same time should go first, similar rules were needed in the field of inventions. For patents, priority is given to the person who was the first to file the patent application.
Under the Paris Convention for the Protection of Industrial Property (effective since 1884, revised in 1967, over 170 member states), nationals of any country of the Union are to be treated as nationals in all other countries of the Union for the purpose of national patent applications. Another important feature of the Convention is the institution of “Union priority”. If an inventor files a patent application in his or her own country, (s)he may apply for a patent in other Union member states within one year with the same priority.
Imagine if you invent a solution in Germany and apply for a patent as the first inventor on 1 April and if someone else already did the same thing in Spain on 15 January and applied for a patent in Germany on 30 November with a priority claim. Under such circumstances, the inventor with the earlier priority would be given the patent and you would get nothing. Despite the possible priority, the Spanish patent would be valid as of 30 November and any licence fee would have to be paid after that date only.
The generosity of society, as mentioned above, is expressed in the courtesy that you may also be given a patent if the Spanish inventor does not apply for a patent in Germany.
It may happen in the context of novelty that an invention is believed to be new and protection is granted by society as the prior art search does not reveal any document that would raise questions as to the novelty of the invention, but someone discovers by carrying out even more thorough searches years later that the invention was in fact not new on the priority date because it had already been described on the back of a receipt or in a Mongolian numismatic journal.
Under such circumstances, society uses the revocation procedure to withdraw the granted exclusive right and cancels the patent with retrospective effect to the date of filing the application.
It is already clear what the requirements of novelty are in comparison to the prior art, but what does “state of the art” mean exactly? State of the art comprises everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing the patent application. A document forming part of the state of the art is known as anteriority. The number of copies the anterior document was published in is irrelevant – the question is if it was available to the public. For example, a document placed in a library is available to the public, whether or not it was actually read by anyone.
The inventor is given a grace period of 6 months to file a regular patent application, if disclosure of the invention was due to an evident abuse in relation to the applicant – for example, when the invention is published through stealing the idea of the inventor.
A formal examination and novelty search is carried out at the beginning of the official procedure. The novelty search may usually be requested after the publication of the search report – it is interesting to note here that a novelty search is not required in each European country. As part of the novelty search, the Patent Office searches for documents – prior patent descriptions mostly – concerning the claims specified by the inventor or by the patent attorney that could question the novelty of the invention or that an inventive step was taken. The revealed documents are analysed in more detail at a later stage of the novelty examination process, and the examination is extended to unpublished documents having priority. While unpublished studies having priority may be taken into account for the evaluation of novelty they may, however, not be considered in relation to the matter of the inventive step.
For the purpose of evaluating novelty, each invention needs to be associated with a main claim specifying all required features of the invention. A patent document may describe more than one related invention, if the ideas behind the inventions are the same. For example, the receipt for a hair restorer mixture and procedure for the production and/or application thereof may be described in the same document.
An invention is found to be not new if all features of the main claim can be found in the earlier documents that have been revealed. Anything may be accepted as an earlier document, but patent descriptions are most commonly used for such purpose. Some 80% of all technical information may be found in patent descriptions only, so they are the focus of novelty searches, for obvious reasons. For the purpose of novelty searches, the quality or patent status of a published patent document – typically a document created at the time of the 18 months’ publication – or the validity of a related patent in any country is irrelevant. For the purpose of search and examination, a patent document or a patent description is taken into consideration as a means of publication only.
Major problems may arise if you take the documents revealed in the search report as “samples” and use them as support for drafting your own patent description, for the following reasons:
the publication documents may not have passed the examination phase yet,
the wording may include distinctive national formulations,
such documents may have been drafted with less than professional care,
it is possible that the final patent description was scheduled for the examination phase following publication.