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Novelty is one of the patentability requirements for a patent claim, whose purpose is to prevent issuing patents on known things, i.e. to prevent public knowledge from being taken away from the public domain.: "I. Patentability; C. Novelty; 1. General" ("An invention can be patented only if it is new. An invention is considered to be new if it does not form part of the state of the art. The purpose of Art. 54(1) EPC is to prevent the state of the art being patented again (T 12/81, OJ 1982, 296; T 198/84, OJ 1985, 209).")
An invention is anticipated (i.e. not new) and therefore not patentable if it was known to the public before the priority date of the patent application. Although the concept of "novelty" in patent law appears simple and self-explanatory, this view is very far from reality. Some of the most contentious questions of novelty comprise:
To assess the novelty of an invention, a search through what is called the prior art is usually performed, the term "art" referring to the relevant technical field. A prior art search is generally performed with a view to proving that the invention is "not new" or old. No search can possibly cover every single publication or use on earth, and therefore cannot prove that an invention is "new". A prior art search may for instance be performed using a keyword search of large patent databases, scientific papers and publications, and on any web search engine. However, it is impossible to guarantee the novelty of an invention, even once a patent has been granted, since some little known publication may have disclosed the claimed invention.
In other countries, such as in EPO members, any act that makes an invention available to the public, no matter where in the world, before the filing date or priority date has the effect of barring the invention from being patented. Examples of acts that can make an invention available to the public are written publications, sales, public oral disclosures and public demonstrations or use.
The grace period should not be confused with the priority year defined by Paris Convention for the Protection of Industrial Property. The priority year starts when the first filing in a contracting state of the Paris Convention is made, while the grace period starts from the pre-filing publication.
Local novelty only regards publications, uses or sales that have taken place within that jurisdiction to be novelty destroying.
The practice of patenting isolated products of nature came to an end only in 2013, when the SCOTUS decided in Association for Molecular Pathology v. Myriad Genetics, Inc. that an isolated product of Nature (a DNA sequence in that case) does not deserve a composition-of-matter claim. At the same time, the Court decided that complementary DNA, which is produced by reverse transcription of messenger RNA and does not contain introns, can be patentable. It is worth noting, that the denial of patentability in this case was not based on novelty, but rather on subject matter eligibility.
In a Jepson claim, the conventional parts of the claim elements are placed in a preamble, such as "In a grease gun comprising a cylinder enclosing a piston longitudinally movable in said cylinder, said cylinder having a nozzle at a distal end thereof", which is followed by a transitional phrase such as "the improvement comprising", which is followed by a recitation of the element or elements constituting the point of novelty, such as "said nozzle having a fluted opening at a distal end thereof".
A conceptual problem may arise in applying the point of novelty method of analysis when the elements at the point of novelty cooperate or co-act with the conventional elements or part of them in a novel way. The novel co-action is properly considered part of the point of novelty of the invention and should therefore properly be recited after the transitional phrase.
The United States Court of Appeals for the Federal Circuit formerly used the point of novelty test for design patents as the basis of a patent infringement analysis, but the court recently abandoned that test in Egyptian Goddess, Inc. v. Swisa, Inc.543 F.3d 665 (Fed. Cir. 2008). The Federal Circuit has at times criticized use of the point of novelty test in obviousness analysis,See In re Gulack, 703 F.2d 1381, 1385 n.8 (Fed. Cir. 1983) ("A printed matter rejection is based on case law antedating the 1952 patent act, employing a point of novelty approach. The 1952 act legislatively revised that approach through its requirement that the claim be viewed as a whole in determining obviousness. The CCPA has considered all of the limitations of the claims, including the printed matter limitations, in determining whether the invention would have been obvious."). but the Supreme Court has continued to use a point of novelty test for obviousness.See Sakraida v. Ag Pro, Inc., 425 U.S. 273 (1976); Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969). In Parker v. Flook the Supreme Court analyzed patent-eligibility (statutory subject matter) under a point of novelty test, citing Neilson v. Harford and O'Reilly v. Morse as authority, but in Diamond v. Diehr, the Court used the opposite approach. Then in Mayo v. Prometheus and Alice v. CLS Bank the Supreme Court went back to the test of the Flook case.
Present-day American patent law still acknowledges that some parts of a patent claim may constitute "insignificant post-solution activity". This is regarded as a kind of "point of novelty" approach, disallowed under present (Federal Circuit) patent law. To combat infringement, truly "insignificant" elements are routinely kept out of patent claims.See generally the Wikipedia article Exhausted combination. The purpose of the patent-eligibility doctrine concerning insignificant post-solution activity, however, is that adding such limitations to a claim does not involve adding an "inventive concept" to the otherwise ineligible underlying idea.See generally Software patents under United States patent law.
The "contribution approach" in European patent law is similar to the American "point of novelty" approach. It is supposed to be invalid, but it is still being applied under various guises in order to avoid counter-intuitive results.
The section does not restrict disclosure to prior patents, giving a broad description of what includes prior disclosure; so long as the subject-matter was disclosed “in such manner that the subject-matter became available to the public”, the subject-matter is barred from being patented. Patent Act, RSC 1985, c P-4, s. 28.2(1)(a) and (b). This may include prior patents, publications or the invention itself being put on display. Disclosures in a private document, such as an internal memo that is not available to the public, do not count.David Vaver, Intellectual Property Law: Copyright Patents Trade-Marks, 2d ed (Toronto: Irwin Law Inc., 2011) at 321.
There is an eight-pronged test to determine whether anticipation occurs in Canada. The prior art must:
In U.S. patent law, a claim lacks novelty, and anticipation occurs when one prior art reference or event discloses all the features of a claim and enables one of ordinary skill in the art to make and use the invention. The term "features" in this context refers to the elements of art of the claim or its limitations as explained in the all elements rule.
A prior art reference must not only disclose every feature of a claim, but must also disclose the features arranged or combined in the same way as the claim.MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008)
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