A Maze of Laws and Exceptions

Examples of Novelty uround the World

Monique A. MORNEAULT* and Bradley F. RADEMAKER**

When assessing the best course of action regarding pre-filing disclosure of an invention, the primary focus turns to “novelty” requirements world-wide. To obtain a patent in many areas of the world, the invention must be new or “novel”. Most countries fall under an “absolute novelty” standard, meaning that any form of public disclosure of the invention prior to the filing of a patent application in that country’s Patent Office will result in a loss of potential patent rights. However, the eagerness of many scientists and inventors to publish their innovations, and concerns for being the first in the market-place with new, cutting-edge products, creates a dilemma between public disclosure and the confidentiality required to protect rights abroad. This article will introduce novelty requirements in various regions of the world, and perhaps encourage closer scrutiny of potentially problematic disclosures which jeopardize patent rights.

In the United States, for an invention to be patentable it must be “new”. There are three conditions set forth in the patent statute (hereinafter Section 102) which are bars to patentability with reference to the date of invention:

- “known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent”;’

“described in a patent granted on an application for patent by another filed in the United States before the invention thereof by the applicant for patent . . .”;2

and

-

* Intellectual property attorney, Wallenstein & Wagner, Ltd., Chicago, Illinois, U.S.A.; lead attorney for the firm’s International Patent Group.

** Intellectual property attorney, Wallenstein & Wagner, Ltd., Chcago, Illinois, U.S.A. Thanks are due to John A. Tessensohn and Shusaku Yamamoto of Shusaku Yamamoto Patent Law Ofices,

Osaka, Japan; Gordon MacGregor of Eric Potter Clarkson, Nottingham, U.K.; Elua Xia Zheng of Lung Tin International Patent & Trademark Agent, Ltd., Beijing, China; Juan Carlos Ojam of Clarke Modet, Buenos Aires, Argentina; Luis Legarreta of Legarreta y Asociados, S.C., Mexico City, Mexico; and Gary Nock of Freehills Carter Smith & Beadle, Sydney, New South Wales, Australia, for their valuable assistance with this study.

1 35 U.S.C. 5102(a). 2 35 U.S.G. §102(e).

28 THE JOURNAL OF WORLD INTELLECTUAL PROPERTY

- “before the applicant’s invention thereof ... was made in this country by another who had not abandoned, suppressed, or concealed it”.3

This amounts to a qualified version of the axiom: if an invention is not new, it is not patentable.

Other provisions of Section 102, namely §102(b), §102(c) and 5102(d), concern “novelty” with reference to the date of filing an application. Thus, while the invention may have been new and patentable at the time of invention, certain acts by the inventor or others may result in the loss of ability to obtain patent protection. For instance, §102(b) reads “[iq the invention was patented or described in a printed publication in this or a foreign country, or in public use or on sale in this country more than one year prior to the date of the application”, then the inventor will lose the right to obtain patent protection. This provision gives rise to a one-year grace period to file an application after a public disclosure.

Similarly, many countries have unique provisions for novelty. Perhaps the most recent change to novelty occurred in Japan on 7 May 1999, effective on applications filed after 1 January 2000, when the Japanese Diet passed several reforms enhancing its patent and trademark laws toward the benefit of intellectual property owners, and to counter the complaints of foreign companies regarding Japan’s system of protection and its apparent leniency toward infringement.

The amended novelty requirements in Japan state that a patent shall not be granted on an invention that was publicly known and worked in a foreign country prior to the filing of a patent application. Prior to the reform, Section 29(1) of Japan’s Patent Law outlined novelty-defeating dsclosures as including inventions that were publicly known and publicly worked in Japan, and publications distributed in Japan or elsewhere, prior to the filing of the application. The new law expands the scope of novelty-defeating acts to include non-Japanese territorial sales and working of the claimed invention. “Worhng” includes producing, using, importing, assigning and leasing or offering for assignment or lease a product itself, a product from a process of manufacturing, and the acts of using a process. If, however, an invention is disclosed under a secrecy agreement, the bar may not be applicable, as it is not technically a public disclosure.

It should be remembered that the novelty-defeating disclosure published by the inventor has to be enabling, i.e. it teaches those skilled in the art how to make and use the claimed invention. If the novelty-defeating dlsclosure fails to provide such information, the disclosure will not be a novelty-defeating bar under Japanese patent law.

Similar to the rules in the United States, Japan offers a six-month grace period in which to file a patent application after a public disclosure. Under Section 30 of Japan’s

3 35 U.S.C. §102(g)

A MAZE OF LAWS AND EXCEPTIONS 29

Patent Law, a patent application will not lose the novelty requirement if the application is filed in Japan (or through a Patent Co-operation Treaty application designating Japan), within six months fiom the date the invention was disclosed to the public. Again, this presumes disclosure without contractual confidentiahty.

Finally, the new Law in Japan expands the definition of “publication” to include an invention made publicly available via the Internet. Thus, an invention disclosed through the Internet will be treated the same as a novelty-defeating publication. Incorporating this change, Section 29 of the Patent Law was amended to read:

“Inventions which were described in a distributed publication or made available to the public through electric telecommunications . . .”

Fortunately, the amended Law specifically confirms that an invention publicly disclosed online can also avail itself of Japan’s six-month grace period.

Continuing in the Far East, China’s current definition of novelty is similar to Japan’s old Law. In China, the definition for novelty related to patent applications or utility models includes that an invention is considered novel if, before the filing date (or the priority date, if claimed), no identical invention or utility model has been publicly disclosed in publications in China or abroad, or has been publicly used or made known to the public by any other means in China. Unfortunately, the definition of “novelty” has not been substantially reviewed or challenged in the Chinese courts or Patent Ofice.

The key consideration in China is the distinguishing geographic conditions of dmlosure affecting novelty. Publication in China, or anywhere else in the world, is a novelty-defeating disclosure. However, any other form of disclosure, such as sales, public use or oral presentations in any other country but China, will not present a bar to novelty. Thus, an inventor in the United States may sell the invention in the United States and still be eligible to file an application in China.

Like many countries, China has incorporated significant qualifications to its rule where novelty is not lost in view of a disclosure provided an application is filed within s ix months after the event. These exceptions include:

- where the invention was first exhibited at an international exhibition sponsored or recognized by the Chinese government;

where the invention was first made public at a prescribed academic or technological meeting; or

where the invention was disclosed by any person without the consent of the applicant.

-

-

Unlike China, where the definition of novelty has not been examined by the courts, the European Community has extensively studied the definition of “novelty”.

30 THE JOURNAL OF WORLD INTELLECTUAL PROPERTY

Article 52(1) of the European Patent Convention requires that for patentability, inventions, among other things, must be “new”. Article 54 states that an invention “shall be considered new if it does not form part of the state of the art”, which includes “everything made avadable to the public by means of oral or written description, by use, or in any other way, before the filing date of the European patent application.”

Numerous decisions from the Boards of Appeal of the European Patent Office (EPo) have addressed novelty and its meaning in actual situations. For instance, “state of the art” comprises everything made available to the public. “Made available” can include a document in a library as part of the state of the art, even if no one was actually aware that the document was available. “Public use” has been determined to include a new type of mirror on a motor vehicle for demonstration purposes. O n the contrary, devices installed in a publicly restricted area have been deemed “not available” to the public because the public did not have unrestricted access to the area to inspect the devices.

These examples highlight the subtle and ever-changing interpretation of novelty requirements. In the EPO, information is available to the “public” if only a single member of the public is in a position to gain access to it and understand it, and if there is no obligation to maintain secrecy. If, however, someone is able to gain knowledge of an invention that was under a secrecy obligation, the invention is not deemed to have been “made available to the public”.

Further subtleties occur when interpreting whether or not secrecy exists. For example, if the obligation to maintain secrecy stcms from an express agreemcnt, then the invention has not been made available to the public. Less clear-cut are cases involving a tacit secrecy agreement, such that the obligation to maintain secrecy arose from the particular circumstances. In practice, demonstration of products or product-testing to a potential buyer are situations determined to constitute a tacit understanding for secrecy.

Finally, it should be noted that the EPO does not have a grace period in which to file an application after what is deemed a novelty-defeating disclosure; thus, rights may be lost in a disclosed invention where the disclosure was “enabling” to one skilled in the art. As noted, whether or not a disclosure is “enabling” may depend upon the particular circumstances.

Turning to yet another area of the world, Australia’s novelty laws are governed by the Patents Act 1990. Australia’s test for novelty includes that each and every essential feature of the invention as claimed must be disclosed in the prior art. Disclosure includes information made publicly available in a document anywhere in the world before the priority date of the claim, and information made publicly available in Australia through the “doing of an act”, such as an oral disclosure, sale, offer for sale or public use. The Patents Act further requires that the prior art information be available in a single document, or through doing a single act. Notably, Australia includes the caveat that the

A MAZE O F LAWS AND EXCEPTIONS 31

“doing of an act” has to be in Australia. Therefore, an inventor could orally disclose an invention, sell or offer to sell the invention in Japan, for example, and novelty would not be affected in Australia. It is important to note that Australian law does not include a grace period for publication or disclosure of an invention. It is thus imperative that the inventor not disclose the details of the invention in a written document made publicly available anywhere, or disclosed through the “doing of an act” in Australia. Case-law has held that even a non-confidential disclosure to a single person has been held sufficient to render information publicly available. However, disclosures made under confidentiality agreements are not considered to be publicly available. Further, exceptions where a disclosure is not novelty-defeating include:

-

-

- unauthorized disclosure or disclosure as a result of reasonable trial or experiment, provided that the nature of the invention requires that the trial be in public.

display at a recognized exhibition;

disclosure by a paper read to a learned society; and

Routine use of confidentiality agreements may be useful to prevent loss of rights in Australia and elsewhere.

Following a more strict view on novelty are South America and Mexico. Similar to other countries, novelty is one of the requirements of patentability; however, South American countries typically have broader definitions of novelty-defeating acts and, in some instances, fewer exceptions to protect novelty in the event of a disclosure.

In Mexico, an invention is novel if it is not included in the state of the art, which includes all technical knowledge made available to the public anywhere in the world by written or oral disclosure, by use or by any other means, prior to the filing date or prior to a validly claimed priority date. Mexico, however, mirrors the U.S. grace period provision, permitting one year fiom public disclosure to file an application.

Argentina has a definition of novelty similar to that of Mexico, in that the state of the art includes all technical knowledge made available to the public through oral or written description, through exploitation or by any means of communication in Argentina or in any foreign country. Novelty is not affected, however, if the disclosure was made by the inventor or successor at a national or international exhibition within one year prior to the filing of the application. The disclosure content and details are to be reported to the Patent Office, and any misstatements in the disclosure may be grounds to deprive the applicant of the right to obtain a patent.

The Andean Pact countries (Bolivia, Colombia, Peru, Venezuela and Ecuador) define the “state of the art” as anything made available to the public anywhere in the world by oral or written description, by use or by any other means prior to the filing

32 THE JOURNAL OF WORLD INTELLECTUAL PROPERTY

date or a valtdly claimed priority date. However, these countries permit several forms of disclosure that are not novelty-defeating, for example:

by the inventor or successor in title;

by a third party who obtained the information hrectly or indirectly from the inventor or successor; or

by disclosure due to evident abuse in the relation with the inventor or successor;

-

-

-

although not all affect novelty as long as the application is fded within one year of the disclosure to protect novelty. However, no jurisprudential decisions exist addressing such exceptions to the disclosure rules.

Finally, Brazil has s i d a r novelty requirements as the preceding countries. Brazil permits several exceptions to novelty-defeating disclosures, including those mentioned above in the Andean Pact countries. However, with regard to experimental disclosure, communications to scientific associations, or disclosure at an officially recognized exhibition, the inventor should request a guarantee to preserve the priority claim. To do so, the specification and appropriate fees are filed, which preserves the priority claim of the application as long as it is filed within one year of the disclosure.

Determination of novelty-defeating acts is not simple to assess. While there are many similarities in the novelty requirements around the world, there are also many subtle, yet significant differences, exceptions and grace periods. As a rule, the safest course of action may be to file a patent application prior to any form of public disclosure. On the other hand, as early filing is not always feasible, it is important to understand the exceptions to novelty-defeating requirements in the various countries in order to protect valuable intellectual property rights. In a maze of laws and exceptions, practitioners and their clients are encouraged to determine at the outset which countries or global regions are important to the client, and then chart an appropriate course of action.