Patents

Novelty

Jane Lambert

Last updated 18 Nov 2005

An invention is patentable only if it is new. Art 54 (1) of the EPC provides that an invention shall be considered new if it does not form part of the "state of the art." 

State of the Art
Paragraph (2) of that article defines the state of the art as  "everything made available to the public by means of a written or oral description, by use, or in any other way", before the date of filing of a patent application. The state of the art also includes European patent applications filed before, but published after, the date of the patent application in the states for which both earlier and latter applications were designated (see also the recent decision of the House of Lords in Synthon BV v. Smithkline Beecham plc [2005] UKHL 59 (20 Oct 2005).  A disclosure of an invention is disregarded if it occurred not more than 6 months before the filing of the application and was due to or inconsequence of:  p

(a) a breach of confidence or other abuse in relation to the applicant for a patent or his or her predecessor; or
(b) the display of the invention at an official, or officially recognized, international exhibition provided that the applicant files a supporting certificate in the specified form at the time of filing the application.

"Written or Oral Description"

In General Tire & Rubber Co. v Firestone Tyre & Rubber Co. Ltd. [1972] 457. the Court of Appeal held that any  description to the public "must contain clear and unmistakable directions to do what the patentee claims to have invented." If, a description contains directions that would have resulted in something being made or done that would subsequently have infringed the patent, that invention cannot be new. On the other hand, a description that might, but would not necessarily have led inevitably to something that would have infringed the patent does not invalidate the patent. "A signpost, however, clear upon the road to the patentee's invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee." Furthermore, the description must be found in one document or a  cross-referenced series of documents. A mosaic of documents drawn from different sources will not anticipate the patent unless one of those sources is an obvious reference work (see Pfizer Ltd.'s Patent [2001] FSR 16, paragraph 66).

"Use"

Manufacturing something that anticipates an invention, or even marketing it, does not make that thing part of the state of the art unless a skilled person could have deduced how it worked by reverse engineering or otherwise. In PCME Ltd. v Goyen Controls Co. UK Ltd. [1999] FSR 801, for example, the circuitry of a control device had been embedded in resin so that it could not be  dismantled. In determining whether the invention had been made available to the public by that device, Laddie J considered what tests or analyses were likely to have been carried out on the product to ascertain how it worked, what would have been the results of those tests and how a skilled person would have interpreted the results. A skilled person, for that purpose, might have been a team that included a forensic engineer. 

Substances or Compositions used in Medicine

Although methods of diagnosis and treatment of humans and animals by surgery or therapy are not patentable by reason of article 52 (4) of the EPC, products for use in such treatment or diagnosis, in particular substances or compositions, may be patentable. Article 54 (5) provides that such substances or compositions do not form part of the state of the art provided their use for a particular diagnosis or treatment is new. This paragraph has led the Swiss Federal Institute of Intellectual Property to grant patents for second medical uses of known substances. The French Cour de Cassation, on the other hand,  has held that such second medical use is not new. The position of the English courts is that a second medical use claim can be valid provided that such second medical use is efficacious (for instance, a cure for male impotence containing a muscle relaxant previously used to treat angina may be patentable provided such use is effective as in Pfizer Ltd.'s Patent [2001] FSR paragraph 42).

Changes to Article 54

The Act revising the EPC abolishes the condition for excluding from the prior art patent applications filed before, but published after, an application for a European patent that both the earlier and later applications should designate the same contracting countries. A new paragraph (4) makes clear beyond  peradventure that a substance or composition used in medical or veterinary diagnosis or treatment may be patented provided that such use does not already form part of the state of the art. Such substance or composition may also be patented for a second or subsequent medical use provided that the previous uses are not already known (article 54 (5) EPC).

Parallel Changes to the Patents Act

S 1 of the Patents Act 2004 makes parallel changes to the Patents Act 1977.

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