Essay: Novelty & inventive step/non- obvious criteria under European Patent Convention (EPC)/United States Patent Code

In this essay we will compare novelty and inventive step/ non- obvious criteria under the European Patent Convention (EPC) and the United States Patent Code and also consider the changes that have taken place in US Patent law and whether the changes have brought the US closer to the EPC approach while also mentioning the advantages and disadvantages of the two systems. The EPC is an inter-governmental treaty that is distinct from the European Community. It co-exists with national laws and is primarily concerned with the establishing of the European Patent Office (EPO) and the granting of European Patents with national designations. The EPO essentially creates a centralised system for the grant of European Patents. On the other hand, United States law is codified and is therefore governed by federal statute. Patent law is encapsulated under Title 35 of the United States Code. Title 35 covers the patentability of inventions, sets outs subject matter, defines novelty, the statutory bars to patent protection, and establishes the requirement of non-obviousness.
Novelty, under the EPC, is a crucial requirement for patentability and dictates that the invention is novel only if ‘new’. An invention in essence is ‘new’ only if it does not form part of the ‘state of the art’. The ‘state of the art’ can be broadly defined to include all matter that is made available to the public before the priority date of the invention. The novelty requirement provides a two-fold rationale, the first being to ensure patents are not used to prevent people from doing what they had done already before the patent was granted (the ‘right to work’ rationale); secondly, to determine that a patent is being given in relation to technical information that is not otherwise available to the public (the ‘information disclosure’ rationale).
What characterises ‘invention’ is also contained in the EPC. However, prior to determining whether the invention is novel, it is necessary to ascertain whether the invention forms part of the state of the art (prior art). The ‘state of the art’ is defined to include all matter made available to the public by means of a written or oral description, by use, or in any other way, before the filing date of the European patent application. The element of being ‘made available to the public’ implies that there are no geographical limits on where the state of the art is to be disclosed. This is referred to as absolute novelty. In essence this provides that if a document is placed anywhere in the world, or has had prior use, could anticipate the invention. It can also be ascertained that there are no restrictions on the mode of disclosure. The prior art may include material such as patent applications, journal articles, photographs conversations, product samples, or sales. The key element to be noted is that it is potential rather than actual disclosure that is vital, as the material is available to be accessed by the public- essentially providing that there is not a need to demonstrate that someone had actually accessed the document; but rather that if they had wanted to access the information, they could have done so.
The EPC provides that the date novelty is accessed is known as the ‘priority date’ of the invention. The priority date is normally on the date of which the application for the invention was filed. European patents are not granted any sort of ‘grace period’, which essentially means that patents can be anticipated and rendered invalid for want of novelty as a result of the applicant’s own acts and disclosures. Therefore the priority date is of paramount importance as it not only the date from which novelty is accessed but is the date from which the inventors can exploit their inventions without taking a risk of any potential patents.
Article 54 (3) EPC provides that there is certain matter which can be included in the state of the art, the wording: ‘patent applications as filed, the dates of filing of which are prior to the date referred… shall be considered as comprised in the state of the art’ – so therefore we can determine that certain matter which is part of the public domain before the priority date can also form part of the state of the art. It can be understood that the reason why it is backdated in this manner is on the basis to avoid the element of ‘double-patenting’, which is essentially where patents are granted to different applicants for the same invention. This problem is created by the time in between the date of filing of patent (normally the priority date) and the early publishing of the patent, where the application forms part of the state of art. The scope of Art 54 (3) is considered in Woolard’s Application [2002] RPC 39 where the applicant filed a patent application in December 1995, which they then went on to withdraw the patent application and wrote to the Patent Office abandoning the application. The letter was received on 12th May 1997 and was effective on that date; however, the application was published on 4th June 1997. The applicant filed a fresh application on the 3rd June 1997 but it was refused on the grounds of lack of novelty on the basis that the earlier application had formed part of the state of art. The presiding judge Laddie J held that the purpose of the act was to the ‘co-existence of two patents for the same subject matter’ and further stated that the two applications need to be made in the same jurisdiction. He went on to further determine that if the earlier application was withdrawn before it is published it should not be treated as prior art for any purpose. This essentially depicts to us the whole contents approach and provides us with the solution to treat the first application as if it had not been published as of the date of the second application and therefore to judge novelty on the grounds of the second application against the believed publication of the first application.
There is also material which is deemed to be excluded from the state of the art- this is encapsulated within Article 55 EPC. It anticipates that certain disclosures would be disregarded in determining novelty. There are two situations where material that is in the public domain is not taken into account when determining novelty of inventions. The first is where the information was obtained unlawfully or was disclosed as a result of a breach of confidence. This reaffirms the principle that material is only made available to the public if the recipient is free in law and equity to disclose its contents. The second situation is where disclosure was due to or made as a consequence of an inventor displaying their invention at an international exhibition. However we must understand that the exclusion apply only to disclosures that are made within the six-month period immediately prior the date when the claim for the invention was in question filed and not the priority date.
When the invention is under examination and the information in regards to the invention has been disclosed by the prior art has been identified we can then begin to determine whether the invention is novel. Where prior art and the invention or the prior art leads directly to the patented invention, it would be easier to determine whether the information has become available to the public. However, the task in determining the novelty of an invention can also become problematic in circumstances where there is gap between the prior art and the invention. This is problematic nature is provided on the basis that the same invention may be known to the public in a variety of different ways. It has been made clear that the invention will lack novelty if at its priority date it is ‘made available’ to the public. This draws upon the principle that patents should be granted only where the public has been provided with useful information, and therefore an invention is said to be made available to the public if there has been an ‘enabling disclosure’. The House of Lords decision in Synthon BV provides that ‘enabling disclosure’ has two distinct requirements consisting of prior disclosure and enablement.
The first element that must be established to show that the patent has been anticipated is disclosure. Sometimes this is known as the ‘reverse infringement test’ to constitute a prior disclosure of an invention the matter relied upon as prior must disclose the subject matter, which if performed, would necessarily (or inevitably) result in the infringement of the patent. Essentially disclosure does not provide room for experiment. Disclosure is objectively determined when faced with the question whether disclosure enables the public to work an invention- and draws upon the principle that under patent infringement does not require a person to know that they are necessarily infringing.
The second element that must be established to show the patent has been anticipated is that the disclosure was ‘enabling’. A disclosure will be enabling and thus destroy novelty if the public is given sufficient information to enable the invention to be put into effect. The aspect of an invention being worked determines that disclosure will be anticipated. Enablement essentially provides that the ordinary skilled person would be able to perform the invention, which would satisfy the requirement for disclosure. Essentially we can understand that for disclosure to be enabling, the prior art must place a skilled person in a position whereby they can work the invention without the need for additional inventive activity.
Enabling disclosure has seen a shift in the relation to the existence of a previous secret or inherent use, which is enough to anticipate a subsequent patent. This occurs when something is created, usually either accidentally or as a by-product of a process, without the public knowing of its existence. In Merrell Dow Pharmaceuticals and Norton the House of Lords considered the status of the secret and inherent use and concluded that the clinical trial conducted by the patentee before the filing of the second patent did not anticipate it, as there was no way the subjects knew what was going on inside their bodies once taking the drug. There was also no public information, which could enable anyone to work the invention. Rather, it was the second patent that was anticipated on the basis that the information was contained in the first patent as the terfenadine specification had directed that on the ingestion of the product it would produce a chemical reaction in the body and for the purposes of working this particular invention was determined to be a sufficient description of the making of the acid metabolite. Under the description the acid metabolite was part of the state of the art as the prior use was not anticipatory.
The requirement that to be a patentable invention it must involve an inventive step is encapsulated under Article 52 (1) EPC. Inventive step is usually considered after novelty has been decided, as something may be new but may not involve a contribution to the art. Essentially an invention is said to involve an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art. Obviousness under Article 56 is explained under the Guidelines for Examination. The EPO approach to assessing ‘inventive step’ in an objective and predictable manner the examiner applies the ‘problem-solution approach’. In the problem solution approach there are three min stages including: (i) determining the ‘closest prior art’; (ii) establishing the ‘objective technical problem’ to be solved, and; (iii) considering whether or not the claimed invention, stating from the closest prior art and the objective technical problem, would have been obvious to the skilled person.
Over the period of years the problem solution approach has been utilized by the EPO as it was useful in determining inventive step and was first adopted in Bayer/ Carbonless Copying Paper . The case involved a chemical invention of microcapsules for carbonless copying paper, which contained within it dyestuff-intermediate. The Examining Division refused the European Patent application on the grounds of lack of inventive step. In the appeal to the Technical Board the applicant narrowed their claims to include a more precise chemical element of water repelling to create special walls on the microcapsules containing the dyestuff-intermediate. The Technical Board allowed appeal as it found that the applicant had defined the problem through the nearest prior art as not just preparing other copying papers but improved copying papers. The problem that the applicant intended to solve was that of storage suitability and proposed to encapsulate the dyestuff-intermediate as a solution within the walls made up of the more precisely described chemical element. As it had improved storage suitability and did not indicate the more precisely described chemical element a person skilled in the art who tried to improve copying papers would not be able to do so, on the basis of the prior art, and had essentially arrived at the solution claimed in the application, thus the application was granted.
However, the Technical Board in the case of Alcan/ Aluminum alloys has since called the problem solution approach into question. The Technical Board determined that while it was assumed that the problem solution approach was applicable in all situations, it was rather to be illustrated as one of the many approaches that could be adopted when it came to assessing inventive step. The boards also determined that there was no legal basis as to why all cases involved the element of inventive step should be put together under one category and assessed by a single approach. This was because Article 56 EPC had left method of assessment open. In situations where the invention essentially breaks ground, it would be inappropriate to test it using the problem-solution approach, as there would be no prior art from which it could formulate the problem.
Article 56 determines that obviousness is ascertained from the perspective of the average person skilled in the art. When considering obviousness of an invention the courts would perceive the invention through the perspective of a person quipped with attributes, skills, background knowledge and qualifications relevant to the field in which they work. The fact that the inquiry is objective means that the actual process by which the invention came about is of no relevance and what matters is that whether a person skilled in the art would consider the invention to be non-obvious. The one element that is shared by the notional skilled person is that they are uninventive.
Prior to determining whether the invention is non-obvious we must first decide what the invention is. The EPO identifies an invention through its problem and solution approach. As the invention is a solution to a problem, to identify the ‘thing’ that is supposed to be non-obvious, it is necessary to identify the problem that invention addresses- which is to be understood from an objective perspective at the priority date of the invention. In identifying the solution that the invention provides the EPC 2000 Implementing Regulations provides the description should disclose the technical solution (even if not expressly stated) and its solution so it can be understood. In some cases it may not be possible to rely on the problem disclosed in the patent application, as the patent application cannot be used to provide an objective statement of the problem. The EPO in some circumstances then reformulates the problem- and ascertains the nature of the problem from the differences between the invention and the closest prior art.
As stated at the beginning of this essay the law of the United States is codified and is governed by federal statue. Patent law is encapsulated under Title 35 of the United States Patent Code (USC). During the last few years there have been changes implemented by congress in regards to Patent law. The Leahy-Smith America Invents Act (AIA) came into effect on the 17th March 2013. This act moved the United States from the first-to-invent system to the first-to-file, which is similar to the system applied by the European Patent Court. Generally a potential patentee must demonstrate that the process or the product they have created or developed must be new, useful and non-obvious, this is derived from 35 USC s.101.
As the old law is still in effect it is only right to also mention it. Under the old USC Patent law Title 35 USC encapsulated the conditions for patentability; novelty and the loss of right. 35 U.S.C. 102 (a) stipulated that ‘a person shall be entitled to a patent- unless (a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country…for patent’. Essentially this provides that the element of use and the fact if the invention is published anywhere in the world could destroy the novelty of a patent. This is known as ‘absolute novelty’, which is the similar standard that is applied by the EPC when determining the novelty of an invention. However, this was based on date of the invention and not on the date the patent was filed. The novelty of an invention was based on specific event occurring prior to the date of the invention.
Under the new law s.101 requires an invention to have novelty and utility. Novelty is defined under s.102 and it also creates the ‘statutory bars’ for protection in addition to the lack of novelty. Section 103 sets out the requirement that the invention must be a non-obvious development over the prior art.
The provision of novelty (35 U.S.C. s102) focuses on issues pertaining to anticipation that may occur prior to invention and if this does take place it prohibits patentability on the grounds of lack of novelty. Similarly the statutory bar draws focus on events that take place twelve months prior to the inventor’s application for a patent. The inventor is essentially given a twelve-month grace period to apply for a patent, but if they fail to do so the statutory bar occurs. If this happens the inventor loses the right of priority and the right to the patent itself, even though they still have novelty of the patent. It can be ascertained that section 102 blurs the line between the statutory bar and anticipation as it does not distinguish the two elements. There are also irregularities in regards to events that occur in domestic and events that occur in foreign countries. Under the statutory bar we find that events that occur in domestically in regards to novelty; can only be patented unless there is a prior patent, printed publication, public use or sale. On the other hand anticipation in regards to novelty can take place any time prior to the invention- therefore in respect to domestic events novelty can be anticipated by prior patenting, printed publication, knowledge or not abandoned, unsuppressed, unconcealed invention by others, or the description of the invention in another’s previously filed and eventually granted patent. In respect to statutory bar and foreign occurring events novelty can be anticipated prior to a patent by anyone, printed publication or through the prior patent application of the patentee but only on the basis that patent is granted prior to the domestic application. In regards to anticipation and foreign occurring events novelty can be anticipated though printed publications or prior patents.
The events above are limited by the notion of substantial identity. This is where the prior use, knowledge or other events must be so substantially similar to achieve disclosure. Anticipation must therefore encompass the invention it has claimed. This test has an exception as to whether enough of the invention is disclosed, which would in turn enable a person skilled in the art to repeat or duplicate the product or process. Public use is another exception, as it would rule out a patent with full disclosure only on the basis that the disclosure would illustrate the benefits of the invention.
The concept of anticipation is essential in regards to interference proceedings, which is based on conflicting claims of two or more inventors of the same product or process, or an application and an issued patent of another. One must note that the earlier invention anticipates the later one and would have priority of protection. The rule of priority in interference proceedings is that a junior party must illustrate an earlier conception, along with diligence from the conception until the reduction to practice. The America Invents Act allows the possibility of a later inventor with rights to a patent, if they file first. Derivation proceedings would essentially replace interference proceedings under the act, and would determine whether the applicant had derived the invention from an earlier inventor.