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Patentability in the context of novelty

Re-contexualising patentability requirement

To determine the patentability of an invention, the intellectual property office has to conduct a substantive examination of the patent application (examination as to substance), seeking to establish whether or not the invention satisfies the requirements of novelty, inventive step, industrial applicability, and that it does not otherwise fall foul of statutory exclusions. These substantive requirements are adjudged cumulatively and not in the alternative. In the event that the invention is then found wanting, it thus fails the patentability test, and protection would be denied.

Absolute novelty notion embraced

Our courts embrace the globally-acknowledged absolute novelty notion by which an invention is deemed novel or new if it does not form part of the state-of-the-art technology immediately before the priority date of any claim to that invention.
Accordingly, to satisfy the novelty requirement and thus qualify to be patentable, the invention must differ in some material or specific aspect from the state-of-the-art or body of knowledge existing as at the time of the filing of the patent application. The determinant concepts thereof are hereunder succinctly defined:

Priority date: Novelty is adjudged as at the priority date above stated, which, of course, is either the date of the filing of the application in the national patents office, or the earlier date within the previous 12 months of filing a corresponding application for the same invention in another country which is a signatory to the Paris Convention. Dates such as the first successful clinical experimentation or first conception of the invention are irrelevant to this inquiry.

The concept “state of the art”: As a measure of an invention’s novelty, the concept “state of the art” status comprises all matter, whether product, process or information, about either in any manner or form made available to the public locally or anywhere in the world. It includes all public disclosures, whether made by  written or oral descriptions, use or other means.

It also includes the contents of an earlier pending patent application lodged by another person even though this application may not yet be open for public inspection. By pending application is meant an application which has been lodged, is still under consideration, and has thus not yet been granted.

Consequently, an invention which discloses no differences with any such disclosures will not be regarded as new. It will have been anticipated, hence not patentable. Therein lies what is coined absolute novelty.

Made available to the public: This is arguably the key phrase to all possible kinds of anticipatory material insofar as it places no limitations on the number of public recipients or geographical area. As such, any knowledge about the invention communicated, even to a single member of the public, without restrictions or inhibiting fetter in such a manner that they are free to use it as they please would constitute making available to the public or public disclosure, regardless of geographical location of the occurrence.
It follows therefore that any prior non-confidential public disclosure such as a report, publication or lecture presentation would be deemed fatal to the novelty of the invention. By inhibiting fetter is meant prohibition placed on the recipients of the knowledge to make further disclosures.
On the contrary, a confidential or secret disclosure would not destroy the novelty of the invention. This limitation to further communication is very important as it would enable the inventor, for instance, to make experimental prototypes of their inventions by outside contractors before they could file their patent applications. Thus inventors and proprietary owners of inventions must be accordingly  warned and guided.

Prior use: Prior use of an invention before lodgement of a patent application can destroy the novelty of an invention if certain precautions are recklessly thrown to the wind. This can be in the form of sales for which the purchaser may notionally be at liberty to dismantle the invention and investigate exactly how it works.

In this sense, the purchaser is perfectly a member of the public in unrestricted possession of the invention. By virtue thereof, the invention would essentially have been placed into the public domain prior to patent protection.

Envisaged in practice are certain complicated situations such as where one or more of the following occurs: prior sale of a product made by an invented process whereby the product itself does not reveal the process used; absent sale transaction; the actual use of the invention is purely fortuitous or incidental; use on purely experimental scale; secret use on a commercial scale,  offering as a gift, etc.

These are very contentious circumstances for which the law in most jurisdictions is not settled. As such, patentees or owners of the inventions must exercise caution. So far, the only clear situation is where secret use on a non-commercial scale is considered as not forming part of the state of the art, and thus the invention not made available to the public.

Contrariwise, where there has been secret use on a commercial scale, then the invention is deemed to have been made available to the public and thus its novelty destroyed

In a nutshell, the legal position is that confidential or secret disclosure does not amount to public disclosure, hence not fatal to the novelty of the invention. Envisaged hereunder are non-prejudicial disclosures such as experimental uses or technical trials, which characteristically are of an express or tacit confidential nature, governed by a fiduciary relationship between the inventor and proprietary owner of the invention.

Testing novelty
The extent of patent monopoly is defined by its claims. Accordingly, novelty is adjudged by the construction of claims for which the following guiding principles have been distilled and enunciated from a litany of case authorities. Sequentially, these are :
(i) The claim(s) and the prior document or anticipatory material are construed objectively and separately. Thereafter, they are then compared to determine whether they are substantially the same;

(ii) The anticipatory material is construed as at the date of its publication at the exclusion of information subsequently discovered;

(iii) Extrinsic evidence of expert witnesses is  admissible only to the extent of proving the meaning of technical terms of the state of the art with respect to giving proper construction and application of the document;

(iv) It is the sole prerogative of the courts, and not that of the expert witnesses, to determine whether the prior disclosure anticipated the invention. In which regard the courts look at substance as opposed to form;

(v) The courts must ascertain essential features (integers) on the basis of which anticipation of the invention shall be adjudged. In which regard where the prior disclosure leaves out a single integer, then the invention is not at all anticipated;

(vi) Where the integers of the prior disclosures and those of the invention substantially correspond, then the invention is anticipated, hence unpatentable. Differences in purposes are irrelevant, hence not a factor;

(vii) The prior disclosure must describe the invention with reasonable certainty, i.e., it must be an enabling disclosure; and

(viii) The anticipatory prior disclosures must not be synthesised or mosaiced from different unrelated sources.


Pasipanodya is an IP consultant who writes in his own capacity. Feedback on: mobile +263 775053007, or e-mail:henripasi@gmail.com. legacyipchambers@gmail.com

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