Patent Protection and the Novelty Requirement

By Jeffrey M. Kaden

In filing for patent protection for an invention, almost all countries require that the subject matter that is claimed in a patent application must not be known or otherwise be part of the prior art. The prior art includes different types of activities, such as disclosures in printed publications, sales or commercial use, and published or issued patents, either by the inventor or third parties. Significantly, disclosures that are made in confidence to third parties will usually not constitute prior art.

Each country, however, has its own specific rules in defining exactly what is or is not prior art. For example, many countries follow the “absolute novelty” standard, while others (including the United States) provide some type of grace period.

In absolute novelty countries (not the United States), a patent application must be filed before the occurrence of any activity that would constitute “prior art.” If a patent application is filed after such activity has commenced, the invention claimed in that application will not meet the novelty requirement, regardless of who is responsible for that activity.

For example, if the inventor publicly discloses or sells the invention prior to the filing of a patent application, that disclosure or sale will render any patent that may ultimately issue as invalid for lack of novelty. Therefore, if obtaining patent protection outside the United States is important, it is often prudent to file a priority patent application (such as a U.S. provisional patent application) before any public disclosure or commercial activity of an invention has first begun.

On the other hand, the United States is a “relative novelty” country; the U.S. patent laws provide for a one year grace period from the time of public disclosure or commercial use within which an inventor may file a patent application and still obtain a valid patent. A similar one year grace period (following public disclosure) is also provided for in the patent laws of Canada, Australia and most commercially significant Latin American countries including Brazil, Chile, Mexico and Argentina.

The major Western European countries (Germany, the United Kingdom, France, Italy, Spain, etc.) are generally considered “absolute novelty” countries and they do not provide for any grace period during which a patent application can still be filed. Under the European Patent Convention (EPC), prior art is considered to include everything made publicly available anywhere in the world by means of a written or oral description, by use, or in any other way before the filing of a patent application.

There is one exception to the absolute novelty requirement In Europe. In the situation where the disclosure of the invention took place without authorization of the applicant (for example, where such disclosure violated a confidentiality agreement), a patent application can still be validly filed within six months of such disclosure.

Japan is also considered an “absolute novelty” country. However, there is an exception that was recently instituted. A patent application can still be filed in Japan within six months from the invention being published, either in printed form or through electronic communications.

For China, “absolute novelty” applies and there is no grace period for filing.

The bottom line is that a patent application must be filed promptly in order to avoid the “novelty” pitfalls that exist in most commercially significant countries or regions.