03 September, 2013

Retrospective - Novelty in Patents

Invention is often building on older inventions or techniques, adding, changing or modifying it to suit a new application. As Isaac Newton poignantly pointed out in his thoughts about his progress in many fields: "If I have seen a little further it is by standing on the shoulders of Giants." As said, invention often needs a springboard to be able to jump to new heights, although this should not enable the abuse of older inventions and claiming it as your own. A preventative measure in the world of patents is the requirement of 'novelty' which mandates that the invention one is seeking to patent has to not have existed in any prior art; to put it bluntly it has to be new. Different countries in the common law take different approaches to novelty, which merit some explanation.

An inventor's motto
In Australia novelty is a requirement under the Patents Act 1990, which sets out that any patentable invention has to be novel when compared to prior art that existed before the invention was being patented. It will only be compared to publicly available information, although legislation pertaining to trade secrets might still apply. This is determined through the 'reverse infringement' test, formulated in Meyers Taylor Pty Ltd v Vicarr Industries Ltd. In the judgment Justice Aickin saw that "[t]he basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement". This would have to be assessed based on all of the integers of any one of the patent claims and whether they would infringe any existing patents. If none of the claims infringe any existing patents, it can be deemed to be novel and therefore patentable. Should all, or the essential, features of the invention which the patent is sought for be disclosed in any prior art which is publically accessible, the invention would be deemed to not being novel and would not be patentable.

In Canada the test for novelty is set out in the Canadian Patent Act, where an invention is defined as "any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter". As stated in the Act, the invention cannot have been disclosed to the public in Canada or anywhere else. This requirement is essentially the same as the one relating to prior art in Australia. As said above, this does not mean the invention has to be wholly new, but can be built on older inventions should it fill the other requirements for patentability. 

Necessity is the mother of all invention
In the United Kingdom the concept of novelty is set out in the Patents Act 1977. Under the 1977 Act an invention is new "...if it does not form part of the state of the art". This, again, would be the case should the invention be made available to the public prior to the lodging date of the patent application. The case of Synthon BV v Smithkline Beecham plc set out the test for novelty, distinguishing between two requirements which have been accepted by the judiciary; prior disclosure and enablement. These two requirements were treated as a single matter, however were separated by Lord Hoffman in Synthon. Prior disclosure echoes the same principle as Australia's approach to novelty, being an assessment of potential infringement due to any possible prior disclosures to the public. In Lord Hoffman's mind however, this could not merely be a matter of possibilities  but infringement would have to be entiled; or in other words, the invention would be an infringement. If other possibilities exist, for example an accident as to the same invention, infringement would not be entiled. Enablement, in Lord Hoffman's assessment, meant that if any ordinary skilled person could create the invention which has been disclosed prior. If the invention does not fall into either, the invention can be seen as novel under the 1977 Act.

In the United States novelty is defined under 35 USC § 102. The American approach is much akin to the Australian and British approach; one which relies on prior art. If your invention has not been patented before, published in a printed publication, in use or sale, or made available otherwise, the invention is eligible for a patent and considered novel. Since the introduction of the America Invents Act, the US has moved from a first-to-invent system to a first-to-file system, This in itself does not change how novelty is assessed in patents in the US, but has changed the dynamic significantly within the system regarding new inventions.


As one can clearly ascertain, novelty is not a simple concept, and can be a time consuming consideration for any given patent handling body. The novelty of any patent can be contested if it is later found out prior art existed, even if the patent is given after the patent body's assessment. From a common sense perspective it is completely sensible, and does protect the legitimate interests of all inventors in attempting to keep all new inventors from merely rehashing old inventions in the guise of novelty.

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