How is prior art considered in the context of an invalidity action?
For the purposes of assessing novelty, the prior art base incorporates any information in a document which is made publicly available anywhere in the world. In addition, Australia recognises ‘whole of contents’ or ‘novelty only’ prior art - information in a patent specification published after the relevant priority date, which if claimed, would have a priority date earlier than that of the claim under consideration. Prior art can only be combined for novelty purposes where a person skilled in the art would treat them as a single source of information.
The prior art base for inventive step incorporates publicly available documents as for novelty, but not ‘whole of contents’ or ‘novelty only’ documents. For patents governed by the law prior to the Raising the Bar amendments, to rely on prior art for obviousness purposes, it must be shown that the skilled person could be reasonably expected to have ascertained, understood and regarded the document as relevant. Documents can only be combined for inventive step where the skilled person could be reasonably expected to combine them.
Australia has a number of grace period provisions, which may have the effect of excluding publications from the prior art base.
certain grounds of invalidity but not others (e.g. lack of novelty but not obviousness).
Prior art is everything made available to the public by means of a written or oral description, by use, or in any other way, before the priority date. There are no restrictions as to the geographical location where or the language or manner in which the information was made available to the public; also no age limit is stipulated for the sources of the information.
In assessing novelty (but not obviousness), patent applications that were filed but not yet published on the priority date are also considered.
On the issue of novelty, it is not permissible to combine separate items of prior art. All relevant features must be disclosed in one document.
Case law has held that the problem-solution approach may be used to determine obviousness. However, other approaches may also be used.
The first step in accessing obviousness is to establish the closest prior art as a starting point for the problem-solution approach. The closest prior art is the document which is the most promising starting point for a development leading to the invention. In selecting the closest prior art, the first consideration is that it must be directed to a similar purpose or effect as the invention or at least belong to the same or a closely related technical field as the claimed invention. In practice, the closest prior art is generally that which corresponds to a similar use and requires the minimum of structural and functional modifications to arrive at the claimed invention.
In the context of obviousness, it is permissible to combine several documents. However, the fact that more than one disclosure must be combined with the closest prior art in order to arrive at a combination of features may be an indication of the presence of an inventive step.
According to art. 11 of the Patent Statute, inventions and utility models are considered new when they do not constitute part of the existing state of art. Single prior art must be used to challenge novelty. For obviousness, a combination of prior arts can be used.
A patent can be declared null when granted contrary from the provisions of the Patent Statute, for example lacking novelty.
As discussed further in Question 8 above, prior art will be considered for some, but not all, grounds of invalidity. Whether a disclosure will constitute prior art will also depend on the date of the document
Prior art means technologies or designs well known by publication or by use in the public domain in China or overseas prior to the filing date (priority date if there is) of the patent. When evaluating the obviousness of a patent, two or more prior arts can be combined, while evaluating novelty of a patent, only one prior art can be cited.
For the prior art that was submitted prior to the filing date (priority date if there is) of the patent and published after the filing date, it can be referred to evaluate only novelty of the patent.
Anything that is publically available before the date of priority is prior art. In addition any patent application with effect in the Czech Republic, that is ultimately published, forms the prior art for the purposes of novelty but not inventive step.
When examining novelty a single document is used.
When examining inventive step documents can be combined.
Bad faith publications or an official international trade fair presentation of an invention does not form a prior art if it took place less than 6 months before the filing of the patent application.
Pursuant to Articles L. 611-11 and L. 611-14 IPC, ‘prior art’ for the purposes of assessing novelty and inventiveness comprises everything made available to the public having the ability to understand the technology; by means of a written or oral description, by use or in any other way, before patent application date (or priority date). Should also be considered as ‘prior art’, only for the assessment of novelty, the content of French patent applications and of European or International patent applications designating France, the application dates of which filing prior to the the patent application date and published on or after that date.
When assessing novelty of a patent, the absolute novelty criteria is applied, i.e. every prior art is relevant, whether written, oral or use and independent of place of publication and language, which is published prior to the application or, where applicable, the priority date of the patent. Also, post published national prior art is relevant (although for novelty only). For assessing inventive step, documents (usually two) may be combined. While the requirements for assessing inventive step do not strictly follow the problem-solution-approach as applied by the European Patent Office, some pointer motivating the skilled person to combine two documents is usually required.
9. In accordance with the Greek law, an invention in considered new if it does not form part of the state of the art, which is considered to comprise anything which is available to the public anywhere in the world (universality principle) by means of a written or oral description or in any other way, before the filing date of the patent application or the date of priority. In this respect, the novelty element is considered to exist, in the case of the manufacturing of a product, if this product significantly differs from products similar thereto, possessing substantially new elements. In the case of the production of a result, the novelty element is considered to exist if there is a significant improvement of an already known result, irrespective of whether the improvement consists only in the way of manufacture, or only in the result, or in the reduction of the costs of manufacture, or in all the above and is not a mere adaptation of elements of methods that are already known without resulting in a significant improvement or a simple use of a means which is known in different environments than the ones it had been used in the past, but in the same way in which it had always been used for obtaining the same result (Supreme Court 545/1996, Supreme Court 1588/1991). The element of novelty, according to the theory, is connected to the object of the invention, which derives from the claims. In case of infringement by an equivalent technical standard, the specification and drawings are used for the interpretation of the claims but do not extend the scope of protection to material that has not been included therein. Further, an invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art. Consequently, it must be presented as something that exceeds the normal technological progress, resulting in an achievement that goes beyond the skills of the average person skilled in the art, namely if the solution to the technical problem was not foreseeable. Moreover, the combination of several technical means or processes for the solution of a technical problem in a unitary way is considered to be an invention only if the combination is not obvious to the average person skilled in the art. The application of equivalent means of an already resolved technical problem is considered to form an invention only if the equivalent is not known to the average person skilled in the art.
For the ground of anticipation to succeed, it is essential that all the claim elements or limitations must be found in a single prior art document. Farbwerke Hoechst Aktiengesellschaft vormals Meister Lucius & Bruning a Corporation etc. v. Unichem Corporation, AIR 1969 Bombay 255.
On the aspect of obviousness, the Division Bench in F. Hoffmann La Roche vs. Cipla, RFA (OS) No. 103 of 2012 vide order dated 8th December 2015, held that following inquiries are required to be conducted:
- To identify an ordinary person skilled in the art,
- To identify the inventive concept embodied in the patent,
- To impute to a normal skilled but unimaginative ordinary person skilled in the art what was common general knowledge in the art at the priority date.
- To identify the differences, if any, between the matter cited and the alleged invention and ascertain whether the differences are ordinary application of law or involve various different steps requiring multiple, theoretical and practical applications,
- To decide whether those differences, viewed in the knowledge of alleged invention, constituted steps which would have been obvious to the ordinary person skilled in the art and rule out a hindsight approach.
- In an obviousness enquiry, hindsight is impermissible.
The test for obviousness under section 13 of the Patents Act is the same as under the EPC, namely, that the invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art. The state of the art comprises everything made available to the public anywhere in the world by means of a written or oral description, by use or by any other means before the priority date.
In Re Glaxo Group Ltd  IEHC 277 Charleton J at paragraph 29 accepted the four stage methodology for approaching the issue in Pozzoli v. B.D.M.O.  F.S.R. 37 at paragraph 23:-
"1 (a) Identify the notional "person skilled in the art";
(b) Identify the relevant common general knowledge of that person;
2. Identify the inventive concept of the claim in question or if that cannot readily be done, construe it.
3. Identify what, if any, differences exist between the matter cited as forming part of the "state of the art" and the inventive concept of the claim or the claim as construed;
4. Viewed without any knowledge of alleged invention as claimed, do these differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?"
As set forth at paragraph 43 of in Re Glaxo, the common general knowledge is the technical background of the notional man in the art against which the prior art must be considered, and is not limited to what the notional addressee has memorised, but includes all material in the field which he knows to exist and which he would refer to and which he understands is generally regarded as sufficiently reliable.
In Glaxo Charleton J suggested a general preference for the problem/solution approach of the EPO, but it is clear that the EPO approach of permitting reliance only on the closest piece of prior art is not followed in Ireland – a challenger may cite as many pieces of prior art as it pleases.
At paragraph 44, the Court accepted that:-
“to common general knowledge must be added any knowledge that a skilled person would acquire before he embarks on the problem to which the patent purports to provide the solution… in addition to common general knowledge, I must examine what the prior art on the issues in this case teaches the skilled team.”
In respect of “mosaicing” pieces of prior art, Charleton J in Glaxo stated at paragraph 44:-
“Since pulling together several pieces of prior art may itself amount to innovation, a mosaic of several pieces of prior art is not inherently likely to be obvious. Where a cross-reference exists in prior art, however, it may be otherwise. Where a piece of information is common to the team in this area, such may be common general knowledge. Where a member of the team has a piece of prior art, properly so considered, it is to be expected for him or her to share it with the team. As the team will have different specialities, I see no reason why they would not add to the discussion as to the prior art, provided the team remains uninventive. The caution against mosaicing is an aspect of the proper approach to obviousness. By unthinkingly applying that caution, the statutory test of obviousness may be lost sight of… the nature of the interaction between the pieces of prior art must be such as to require an inventive step before the test for registration of a patent under the 1992 Act, and under the Convention, can be met… the question is: Is there anything about putting together (a) and (b) or whoever number of pieces of prior art, which is inventive? My view in this case is that the use by the team of the pieces of prior art cited does not attract the caution reminding me that a mosaic is, of its nature, inventive.”
Prior art under Israeli law includes publication by written, visual, audible or any other form, as well as exploitation or exhibition, which discloses sufficient particulars to enable the notional skilled person to make the invention.
Prior art can be novelty destroying or it can negate nonobviousness. A prior publication would anticipate the invention only if it describes it in clear and exact terms so as to enable the notional skilled person to practise the invention. Israeli courts adopted and applied the well-known dictum in the UK judgment in the matter of General Tire & Rubber Co Ltd v. Firestone Tyre & Rubber Co Ltd  R.P.C. 457, 485, that "to anticipate the patentee’s claim, the prior publication must contain clear and unmistakable directions to do what the patentee claims to have invented . . . 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".
The Israeli Patents Act does not contain an on-sale bar. Furthermore, the invention is considered novel even if it covers a product that was available to the public before the priority date, inasmuch the public disclosure does not provide an enabling disclosure.
The Supreme Court adopted the rule against ‘mosaics’ in the assessment of novelty. Accordingly, it is not legitimate to piece together a number of prior art documents to anticipate the invention. However, the rule against ‘mosaics’ does not extend to a series of documents referencing each other. Furthermore, the rule against ‘mosaics’ may not be followed to its fullest extent in the case of combination inventions.
When evaluating nonobviousness, all the professional knowledge should be reviewed and for that end it is permitted to ‘mosaic’ together different prior publications, as long as such mosaicking would have been obvious to the notional skilled person before the priority date.
Whether a specific prior publication may be deemed relevant in dealing with novelty and yet ignored in dealing with obviousness, on account that a diligent search performed by the notional skilled person would have failed to discover it, is supposedly an open question under Israeli law. In one Supreme Court decision, albeit quite old, it was held that an argument for such varied treatment of obscure prior art citations is a serious argument. Nevertheless, the better view seems to be that all prior art references should be considered in dealing with both novelty as well as obviousness.
Under the Patents Act, matter obtained from the owner of the invention and published without consent will not prejudice patent eligibility if the patent application is filed within ‘a reasonable time after the publication becomes known to the applicant’. Accordingly, publication of the invention in violation of undertakings of confidentiality will not affect the rights of the patentee and will not be considered when assessing novelty or nonobviousness. An express and specific agreement as to confidentiality is not necessary, and an obligation of confidence can be inferred from the circumstances or from the relationship between the parties. Therefore, information obtained from the inventor and disseminated in violation of principles of good faith or equity will generally not form part of the prior art for the purpose of assessing novelty and nonobviousness.
In addition, the Patents Act provides that displaying the invention or publicising its description and use at an industrial or agricultural exhibition in Israel or at a recognized exhibition in a WTO member state, will not form part of the state of the art, provided that the following two conditions are met: (a) an official notice was given to Patents Registrar before the opening of the exhibition; and (b) the patent application was submitted within six months after the exhibition opened. Similar provisions exist with respect to publication in lectures given by the inventor before scientific societies or in official publications of said societies. Again, the publication will not be considered part of the state of the art if the Patents Registrar is given prior notice of the lecture and the patent application is filed no later than six months from the date of the lecture.
The relevant prior art is identified and interpreted differently depending on which is being considered between novelty and inventive step.
The prior art relevant to the assessment of novelty is the ‘state of the art’ as defined in Art. 46 Italian IP Code, namely 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 or before the date of priority (if priority is claimed) and Italian or European patent applications filed before the filing or priority date, even when not yet published by said date.
Combination of prior art references is not allowed when assessing novelty. In principle, lack of novelty is found only in presence of a prior art reference that discloses alone each and any of the claimed features. References or notions of common general knowledge may be used to interpret certain parts of the disclosure.
The prior art relevant to the assessment of inventive step is the ‘state of the art’ as defined in Art. 46 Italian IP Code, minus patent applications that, while filed before the filing or priority date, were not yet published by said date.
A criterion that should further narrow the prior art relevant to the assessment of inventive step is the technical field or background of the relevant person skilled in the art. For example, as opposed to a patent directed at the formulation of a known active pharmaceutical ingredient, the relevant prior art should not include all documents discussing the active at hand, but only documents pertaining to the formulation of such active or similar actives. Some of our courts are however more generous than this argument would allow and tend to be over-inclusive when selecting the relevant prior art.
In the framework of inventive step, prior art is considered in light of the renowned problem-solution approach applied by the EPO.
Types of prior art references include: (i) a reference distributed, etc. prior to the priority date of the application of the relevant patent; and (ii) the specification, etc. of a prior Japanese application which was filed prior to the priority date of the application of the relevant patent and laid open after such priority date. A type (i) reference is available as providing grounds for lack of novelty, and a combination of two type (i) references is available as providing grounds for lack of inventive step. Meanwhile, a type (ii) reference is available as providing grounds for lack of novelty; however, a combination of a type (ii) specification, etc. and another reference cannot serve as grounds for lack of inventive step.
Everything made available to the public anywhere in the world, either in writing, in lectures, by exploitation or otherwise, before the priority or filing date of the patent application shall constitute prior art.
In the assessment of novelty it is not allowed to combine prior art references while this can be done in the assessment of inventive step.
Novelty is considered in the light of the prior art defined as follows: everything that before the date of priority has been made available to the general public in the form of a written or oral description, by use, issue or disclosure in a different manner. The prior art includes the patent or utility models applications with an earlier priority even if not yet disclosed to the public, provided that they are subsequently published in the manner specified in the Industrial Property Law.
Novelty is not destroyed if the disclosure of the invention took place not earlier than six months before the date of filing and was caused by an obvious abuse against the applicant or his legal predecessor.
The prior art taken into account when assessing the obviousness does not include documents which were not made publicly available before the priority date.
The state of the art shall be held to comprise everything made available to the public before the priority date, by means of a description, by use or in any other way, and the content of patent and utility model applications filed prior to the patent application, to be effective in Portugal but not yet published, provided that they are published on the same date or after the priority date.
The Portuguese courts and tribunals generally follow the EPO case law when discussing the prior art.
Russian patent law requires absolute world wide novelty. Prior art includes any information became public anywhere in the world before the priority of patent application (part 2 article 1350 of the RUCC), including but not limited to open use.
Russian patents and patent applications with earlier priority are included into prior art from the priority date, provided that they are published in the Russian language.
Meanwhile there is 6 months inventor’s grace period: the information distributed by inventor or applicant or from their consent shall not be cited against his invention, if respective application has been filed with RU PTO within 6 months (or with the first patent office - for Eurasian patent applications).
What constitutes prior art
Under section 14(2) of the PA, prior art in the case of a particular invention comprises all matter which has at any time before the invention’s priority date been made available to the public (whether in Singapore or elsewhere). The concept of “prior art” embraces a wide array of material and includes all informational matter whether a product, a process, or information about either. Written prior art may take the form of published articles, books and patent specifications which have been filed and published.
Under section 14(3) of the PA, prior art for the purposes of assessing the novelty of a claimed invention also includes matter contained in an application for another patent which was published on or after the priority date of that invention, if that matter was contained in the application for that other patent both as filed and as published and the priority date of that matter is earlier than that of that invention. Only patent applications which are filed in Singapore, or filed under the Patent Co-operation Treaty as an international patent which designates Singapore as the country in which protection for the invention is sought are relevant for section 14(3) of the PA.
Section 15 of the PA states that section 14(3) of the PA is disregarded in conducting the obviousness assessment of a claimed invention. That means that matter contained in a patent application which was unpublished as at priority date of the claimed invention but which was subsequently published does not constitute prior art in determining whether the invention was obvious.
Information about an invention which is made publicly available by oral disclosure may also constitute prior art. Further, prior art also includes prior demonstration or use of products or processes which makes the information embodied in them publicly available. Therefore, the trial use of a prototype traffic controller in public which gave the public “direct and unambiguous” access to information contained in the invention placed that information into the prior art, thus anticipating the patent in suit for that invention.
However, the following disclosures of matter constituting an invention made within 12 months prior to the date of filing the application will be disregarded:
(a) where the disclosure of matter which was obtained unlawfully or in breach of confidence;
(b) where the disclosure was made in breach of confidence;
(c) where the disclosure is an inventor-originated disclosure made at an international exhibition or before a learned society; and
(d) where the disclosure is an inventor-originated disclosure made in circumstances which do not fall under the above, but excluding an inventor or joint inventors’ own published applications unless such publication was erroneous.
Prior art is considered when the validity of a patent is being assessed particularly in respect of the ground of novelty and inventive step.
Relevance of prior art in the novelty assessment
An invention is novel if it does not form part of the state of the art (also known as “prior art”).
After the prior art in relation to a particular invention is ascertained, a two-step inquiry is to be undertaken to determine whether the invention lacks the necessary novelty and is therefore anticipated by the prior art.
The first is to ask whether the prior art discloses the invention.
There is disclosure if the prior art contains “clear and unmistakable directions to do what the patentee claims to have invented”, in that the inventor of the cited prior art is clearly shown to have “planted his flag at the precise destination” of the patentee’s claim.
Alternatively, one may ask whether the performance of an invention in the prior art would necessarily infringe the patent if it were granted in respect of the patent-in-suit. This must be strictly proven by the party seeking invalidation of a patent. As long as there is more than one possible consequence of performing the invention disclosed by the prior art, it cannot be said that infringement would “necessarily result”. Indeed, the mere fact that infringement was “overwhelmingly likely” is insufficient for the purposes of establishing anticipation.
Generally, in conducting the novelty inquiry, the claimed invention must be compared against each individual piece of prior art separately to determine whether it was anticipated by each piece of prior art. However, cross-referencing may be allowed where a later prior art document refers to an earlier document or where a series of documents forming a series of disclosures refer to each other. Nonetheless, where a later document references only one aspect of the earlier document, only that part (as opposed to the entire document or that chapter containing that reference) is to be read with that earlier document.
The second is to ask whether the prior disclosure is enabling.
As a preliminary matter, enablement is conceptually distinct from disclosure. While the disclosure is concerned with whether the prior art discloses an invention which if performed would necessarily infringe the patent-in-suit, the enablement focuses on whether the technical teachings of the prior art provides enough information to enable the person skilled in the art to work the invention as disclosed by the prior art.
The person skilled in the art is a legal construct, being a person who:
(a) possesses common general knowledge, being the mental equipment that is necessary for competency in the field of endeavour in question;
(b) has a practical interest in the subject matter of the patent or be likely to act on the directions given in it; and
(c) whilst unimaginative, is reasonably intelligent and wishes to make the directions of the patent work.
The person skilled in the art can also consist of a notional team of persons having different skills, depending on the relevant art.
Relevance of prior art in the obviousness assessment
An invention will involve an inventive step if the invention is not obvious to a person skilled in the art having regard to the prior art. Prior art for the purposes of the obviousness assessment comprises all matter which has at any time before the invention’s priority date been made available to the public (whether in Singapore or elsewhere).
Unlike the novelty assessment, in conducting the obviousness assessment, it is permissible for prior art references to be read collectively in a “mosaic” if they can be put together by an unimaginative man with no inventive capacity. For example, in assessing the obviousness of a patent in a suit which deals with the inspection and placement of electronic components onto printed circuit boards, it is fair to mosaic prior art references which are all obviously concerned with the handling of wafer dies.
Whether a claimed invention involves an inventive step is determined with reference to the four-step Windsurfing approach:
(a) identify the inventive concept embodied in the patent in suit;
(b) assume the mantle of the normally skilled but unimaginative person in the art at the priority date and impute to him what was, at that date, common general knowledge in the art in question;
(c) identify what, if any, differences exist between the prior art and the alleged invention; and
(d) ask whether, viewed without any knowledge of the alleged invention, those differences constitute steps which would have been obvious to the skilled man or whether they require any degree of invention.
One test in the obviousness assessment is whether the person skilled in the art would “assess the likelihood of success as sufficient to warrant actual trial”. This is also known as the “obvious to try” test. However, this test must be applied with care, given that not all inventions are solutions to problems that were known in the prior art and that in some cases the inventive step resides in the identification of the problem instead.
The following constitutes prior art under the Korean patent law: (1) an invention publicly known or practiced in Korea or in a foreign country prior to the filing of the patent application at issue; (2) an invention published in a publication distributed in Korea or in a foreign country or an invention disclosed to the public via Internet prior to the filing of the patent application at issue; and (3) an invention described in the specification of a patent application filed prior to and published after the filing of the patent application at issue.
Prior art under (1) and (2) above may be cited for asserting lack of novelty and inventiveness while prior arts under (3) may be cited only in terms of lack of novelty.
Prior art can be combined in asserting lack of inventiveness. In determining the inventiveness of an invention by citing multiple prior art references, the inventiveness of the claimed invention is denied if the references present a suggestion or motivation that a combination of the references could lead to the claimed invention at issue; or otherwise, if it is deemed that a person of ordinary skill in the art can easily reach such combination in view of the state of the art, technical common sense, fundamental technical problem in the art, technology trend, and demands of the industry at the time of filing the application.
Prior art is anything public before the priority date. An unpublished patent application (in Sweden or at the European Patent Office, EPO) may be considered as prior art for novelty purposes from the applications’ priority date, given that it is subsequently published.
Prior art citations cannot be combined for novelty. Combinations are possible for inventive step.
The state of the art comprises everything made available to the public by means of a written or oral description, by use, or in any other way prior to the filing or priority date. Prior art also includes so-called non-enabling disclosures. It is up to the parties to introduce prior art references in time.
Prior art references can be combined for the purposes of assessing novelty and obviousness. An explicit teaching or motivation to combine two or more prior art references is not required. A combination of prior art references is, however, only admissible if there have been suggestions or motivation to do so. The combination of prior art references may not lead to an artificial ex-post evaluation.
An invention will be considered as lacking the required novelty or non-obviousness if it constitutes part of a prior art or if someone of ordinary skills in the relevant fields could easily make the invention based on prior art.
When considering the requirement of novelty, prior art that was disclosed in a domestic or foreign patent specification or drawings that are not part of the invention for which the application was filed, but which has become publicly known or used technology, will be cited by the examiners as the ground to reject the application. Also, if an invention claimed in a patent application is identical to an invention disclosed in the description, claims, or drawings of an earlier-filed patent application for an invention, which is laid open or published after the filing of the later-filed patent application, the invention will also be considered to lack novelty in order to comply with the first-to-file principle.
Except for the first invention of the pioneer in a particular field, most patents are inventions that are cumulative of prior art. As such, the patent office/court shall avoid hindsight doubts when an invention is or not obvious in light of prior art evidence. Usually, several factors will be taken into account, such as "unexpected technical effect", "solving long-standing problems", "overcoming technical prejudice" and "obtaining commercial success" when determining whether a patent is non-obvious. There are also some secondary considerations under TIPO’s“Examination Guidelines” and scholarly opinions. For instance, if an invention leads to the patentee’s commercial success.
Prior art under Thai patent law includes:
1) an invention that was widely known or used by others in Thailand before the patent application date;
2) an invention for which the details were described in a document or printed publication or otherwise disclosed to the public in Thailand or overseas before the patent application date;
3) an invention that was already been patented in Thailand or overseas before the patent application date;
4) an invention for which a patent application has been filed overseas and 18 months have elapsed since the patent application date; and
5) an invention for which a patent application has been filed in Thailand or overseas and the patent application has been published before the patent application date in Thailand.
In the context of an invalidity action, prior art references cannot be combined for the purposes of assessing novelty, but they can be combined for purposes of assessing an inventive step (obviousness).
According to the IP Law, any invention surpassing the state of the art is considered novel. Prior art is described as any information available to the society and disclosed verbally, in writing, through use or any other way in the world before the priority or application date of the patent. Under these circumstances, it goes without a doubt that prior art also covers any patent applications which were published before the application date of the subject patent. A patent, which cannot be accepted to be novel, does not involve inventive step as well.
As an exception to the general description of the prior art definition in the law, the first version of a national patent application, predating the subject application and not yet published at the application date, may still be considered within the scope of prior art. This rule also applies to the applications entering to the national phase through Patent Cooperation Treaty or validations of the European patents. Even though these applications are considered within the scope of the prior art, by law, the content of such applications are deliberately left out when considering the inventive step.
Moreover, grace period is also accepted in Turkish law and determined as 12 months before the application or priority date. Accordingly, Article 84 of the Intellectual Property Act defines the disclosure types made within 12 months before the application or priority date that do not affect novelty as follows:
• disclosure by the inventor.
• disclosures by an office authorised to receive patent applications if:
- the disclosed information was in another application by the same inventor and the information was required to be disclosed; and/or
- a third party discloses information directly or indirectly obtained from an inventor without their approval or knowledge; or disclosures by a third party which directly or indirectly obtains information from the inventor.
State of the art
As mentioned above, for a patent to be valid it must, inter alia, be novel and involve an inventive step.
Section 2 Patents Act provides that an invention shall be taken to be new (i.e. novel) if it does not form part of the “state of the art”.
Section 2(2) Patents Act relevantly provides that the state of the art in the case of an invention shall be taken to comprise all matter (whether a product, a process, information about either, or anything else) which has at any time before the priority date of that invention been made available to the public (whether in the UK or elsewhere) by written or oral description, by use or in any other way.
Section 2(3) Patents Act relevantly provides that the state of the art in the case of an invention to which an application for a patent or a patent relates shall be taken also to comprise matter contained in an application for another patent which was published on or after the priority date of that invention, if that matter was contained in the application for that other patent both as filed and as published, and the priority date of that matter is earlier than that of the invention.
Under Section 3 Patents Act, an invention shall be taken to involve an inventive step if it is not obvious to a person skilled in the art, having regard to any matter which forms part of the state of the art by virtue only of Section 2(2), and not of Section 2(3) Patents Act.
Accordingly, the state of the art differs for the purposes of novelty and inventive step. Such patent applications which form part of the prior art for the purposes of the assessment of novelty (but not inventive step), by virtue of Section 2(3) Patents Act are often referred to as “novelty only prior art”.
For the purpose of establishing a lack of novelty, the relevant anticipatory disclosure must be entirely comprised within a single document. If more than one document is cited against a patent, each such document must stand on its own and these documents cannot be combined.
However, if a cited document refers to a disclosure in another document in such a way as to indicate that this disclosure is intended to be included in the disclosure of the cited document, then the two may be read together as though they were a single document.
While it is not possible to combine the disclosure of a given document with other matter to establish a lack of novelty, it is permissible in certain limited circumstances to combine prior art references (whether published documents, instances of prior use or common knowledge) in support of an argument that a claimed invention lacks an inventive step. This is a practice referred to as “mosaicing”.
However, in order to establish that an invention is obvious in light of disclosures from two or more prior art references, it must have been likely that the notional skilled person lacking in inventive capacity would have considered the teachings from those prior art references together. Put another way, it is not permissible to just link one piece of prior art with another, unless doing so itself would be uninventive. The combination of prior art references is more likely to be permissible in circumstances where one document cross-refers to another.
It should be noted that, in practice, it is uncommon for such mosaicing to be permissible in the UK. Instances where this has been allow remain the exception rather than the rule.
The scope and content of prior art is defined in 35 U.S.C. §102. This section was amended by the America Invents Act (“AIA”) in 2011, and the new definition of prior art applies to applications containing at least one claim with an effective filing date after March 15, 2013. For applications containing claims only with effective filing dates before March 16, 2013, the old law applies.
The principal difference is that the AIA moved the United States from a first-to-invent system to a first-inventor-to-file system. It also removed geographic and language restrictions from the previous definition of prior art. Disclosures outside of the United States before the effective filing date may now serve as invalidating prior art. There are exceptions, however, such as the one-year grace period for an inventor’s own work, which remains an exception under the AIA. This is in contrast to the absolute novelty standard mandated by the patent laws of other countries.
In Vietnam, prior art, whether for prosecution or invalidation, refers to any disclosures made to the public either before the priority date or before the patent filing date if the patent does not claim a priority right. The prior art may be in the form of published documentation or an actual product.
Prior art may be considered when the patent office re-evaluates novelty (to check whether or not the exact claimed invention was disclosed by single prior art, not combination of several prior arts) or re-evaluates inventive step (to check whether or not the claimed invention or the equivalent solution was taught by one or a combination of several prior arts).