What are the key grounds of patent invalidity?
Key grounds of invalidity are:
a. No manner of manufacture (non-patentable subject matter);
b. Lack of novelty;
c. Lack of inventive step;
d. Lack of support (or fair basis for patents governed by pre-Raising the Bar legislation);
g. Secret use;
h. Failure to disclose best method;
i. Lack of clarity;
j. Lack of entitlement.
The grounds for invalidity are:
- Lack of novelty.
- Lack of inventive step.
- Lack of industrial applicability.
- Breach of good morals.
- Insufficient disclosure.
- Added matter.
- Lack of patentability (Computer programs, therapeutic methods, plant and animal varieties, biotechnological inventions according to Directive 98/44/EC, etc)
Furthermore, a patent can be revoked if the patentee is neither the inventor nor his successor in title. However, only the real inventor or his successor in title may file a corresponding application before the APO. There is no case law yet on the question of how the possibility that a patent may be revoked because that patentee is neither the inventor nor his successor in title effects the infringement proceedings.
The most common grounds of patent invalidity are obviousness, eligibility, lack of written description and definiteness.
Anticipation: Anticipation is concerned with whether the claimed subject matter was both disclosed and enabled by a single prior art reference, whether that reference was written, used, or otherwise available to the public in Canada or internationally. The disclosure requirement is met where the single reference includes all information which is needed to produce the claimed invention. The enablement requirement is met where the person skilled in the art would be able to produce the claimed invention without the exercise of any inventive skill.
The relevant date for considering anticipation is the patent’s Canadian filing date or, if available, priority date (for 3rd party disclosures), or one year prior to the Canadian filing date (for disclosures made by the applicant).
Obviousness: A patent claim is invalid if its subject matter would have been obvious to a person skilled in the art based on information that was available to the public before the claim date (the Canadian filing date, or if available, priority date). The steps in determining whether a claim is obvious as of the relevant date are:
- Identifying the notional “person skilled in the art”;
- Identifying the relevant common general knowledge of that skilled person;
- Identifying the inventive concept of the asserted claim, or where that cannot readily be done, construing the claim;
- Identifying what, if any, differences exist between the matter cited as part of the state of the art, and the inventive concept of the claim (or claim as construed); and
- Determining whether said differences constitute steps which would have been obvious to the person skilled in the art (as viewed without any knowledge of the alleged invention as claimed). Depending on the circumstances, the analysis may also include a consideration of whether it was “obvious to try”, which may consider factors such as the climate of the field at the time of the invention, attitudes, trends prejudices and expectations, as well as secondary factors such as commercial success/meritorious awards, but must not include any hindsight analysis.
Inutility: As an invention is required to be useful, any claim which is not useful is invalid for inutility. In determining whether a claim has sufficient utility, courts will identify the subject matter of the invention by construing the claims, and will ask whether the subject matter is useful – that is, capable of a practical purpose. Even a scintilla of utility may suffice. The inventor must have either demonstrated or soundly predicted the utility of the invention at the time of filing the patent.
Insufficient Disclosure: Where a patent specification fails to correctly and fully describe the invention and its operation or use as contemplated by the inventor, it is invalid for insufficiency.
Ambiguity: Patent claims must define distinctly and in explicit terms the subject matter of the invention for which an exclusive privilege or property is claimed.
Double-Patenting: Double patenting occurs where a patent claims the same subject matter of an invention that was claimed in an earlier patent. There are two types of double-patenting:
- ‘Conterminous’ double patenting: One or more claims of a patent are identical to one or more claims of an earlier patent.
- ‘Obviousness’ double patenting: The subject matter of a patent is obvious in view of an earlier patent.
Overbreadth: The monopoly of the patent must not exceed the invention made by the inventor, or the invention disclosed in the specification of the patent.
Non-Patentable Subject Matter: Invention ‘means any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter.’ (Patent Act, s. 2). The courts in Canada have recognized various classes of non-patentable subject matter, including higher life forms, methods of medical treatment, and other methods involving professional skill.
Wilful Material Misstatements: A patent is void if any material allegation regarding the patent in the applicant’s petition is untrue, or if the specification and drawings contain more or less than is necessary for obtaining the end for which they purport to be made, and the omission or addition is wilfully made for the purpose of misleading.
The key grounds for invalidity of a patent comprise:
(1) the patent lacks of novelty and inventive step,
(2) the subject of the patent does not comply with the definition of invention, utility model or design in Article 2 of the Patent Law;
(3) a design patent is an existing design, has no obvious difference from an existing design or combination of existing design features, or conflicts with legal rights previously acquired;
(4) the same patents were repeatedly granted;
(5) the invention or utility model was completed in China, and the patentee submitted a patent application to a foreign country without first reporting to the State Intellectual Property Office for a confidentiality review;
(6) for a design patent, the picture or photo of the product does not clearly show the design of the product sought for patent protection;
(7) the claims are unclear;
(8) the claims cannot be supported by the description;
(9) the description fails to fully disclose the technical solution sought for protection in claims;
(10) the independent claim lacks an essential technical feature;
(11) the amendments to the patent documents go beyond original disclosure;
(12) the patent is granted based on a divisional application, and the divisional application is beyond the scope of the original application;
(13) the patent is in violation of national laws, violation of social morality or nuisance of the public interest, or completion of the patent depends on genetic resources acquired or utilised in violation of laws and administrative regulations; and
(14) a patent belongs to the following items:
- scientific discovery;
- rules and methods of intellectual activities;
- diagnosis and treatment methods of illnesses;
- animal and plant varieties;
- substances obtained through nuclear transformation method; and
- a design which has major marking effect on the patterns or colours of graphic print products or a combination of both patterns and colours.
Patent rights may be granted to the manufacturing methods for products listed in item 4) above.
Please be noted that unity of patent is the requirements for the grant of a patent but not a available ground of invalidity.
The IPO can revoke a patent if
- It did not satisfy the conditions of patentability, i.e. novelty, inventive step and industrial application;
- It is not described clearly and fully enough for the skilled person to be able to replicate it, i.e. ‘sufficiency of disclosure’;
- The scope of the patent extends beyond the scope of the patent application , i.e. ‘added matter’;
- The patent owner has no right to the patent (only on the application of the actual inventor).
Patents cannot be granted:
- If contrary to public morals;
- For purely biological reproduction of plants or animals;
- If the subject matter is a discovery, scientific theory, mathematical formula, aesthetic creation, plans, rules or method for the carrying out of intellectual activity, playing of games, conduct of business activity, computer programmes, or provision of information.
A patent can be revoked on any of the following grounds set forth under Article L. 613-25, IPC and Article 138, EPC):
- added matter;
- insufficient description;
- lack of novelty;
- lack of inventive step; or
- lack of industrial applicability.
The French designation of a European patent can also be revoked if its proprietor had no right to the invention.
Patents in Germany can be invalidated because of:
- Lack of novelty
- Lack of inventive step
- Lack of industrial applicability
- Excluded subject matter
- Added matter
- Inadmissible broadening
- Unlawful usurpation (of the invention)
According to the law, a patent can be declared null by court decision for the following reasons:
- The owner of the patent is not the inventor or his assignee or beneficiary
- The invention is not patentable in accordance with the provisions of the law
- The description attached to the patent is insufficient for the invention to be carried out by a person skilled in the art.
- The subject matter of the granted patent extends beyond the content of the protection as requested in the application.
Section 64 of the Patents Act, 1970, provides the following grounds of patent invalidity:
a) The invention so far claimed in any claim of the complete specification has been claimed in a valid claim of earlier priority date of another patent granted in India;
b) The person who claims to be a patentee is not entitled to the claim under law;
c) The patent was obtained wrongfully in contravention of his rights of a third party;
d) The subject matter of any claim is not an invention;
e) The invention is not new or novel;
f) The invention so far as claimed in any claim of the complete specification is obvious and does not involve any inventive step;
g) The invention is not useful;
h) The complete specification does not completely and fairly describe the invention and the method by which it is to be performed;
i) The scope of any claim of any complete specification is not clearly and sufficiently defined;
j) The patent was obtained on a false suggestion or representation;
k) The subject matter is not patentable under the Act;
l) The invention so far as claimed was secretly used in India before the priority date;
m) The patentee has suppressed material information or has furnished information which in any material particular was false;
n) The Patentee has contravened the secrecy provision provided under Section 35 of the Patents Act, 1970;
o) That leave to amend the complete specification was obtained by fraud;
p) That the complete specification wrongly mentions or does not disclose the geographical origin of biological material used for the invention; or
q) That the invention so far as claimed was anticipated with regard to knowledge, oral or otherwise, available within any local or indigenous community in India or elsewhere.
Invalidity may be raised as a defence to infringement proceeding or during stand-alone revocation proceedings. Issues of infringement and validity are heard in the course of the same proceeding.
A patent may be revoked on the ground that:
- the subject-matter of the patent is not patentable under the Patents Act;
- the specification of the patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art;
- the matter disclosed in the specification of the patent extends beyond that disclosed in the application as filed;
- the protection conferred by the patent has been extended by an amendment which should not have been allowed; or
- the registered proprietor of the patent is not entitled to the patent (by reason of the fact that he is, for example, neither the inventor nor his employer).(Section 58, Patents Act)
The principles of patent invalidity under Israeli law are substantially similar to the principles recognized under UK and US law. Thus, lack of novelty or obviousness, excessive claim breadth and lack of support or lack of enablement are all grounds of invalidity, as are unpatentable subject-matter and fraud on the Patent Office. Lack of entitlement is also ground of invalidity if raised by a person claiming to be the rightful owner of the invention, and arguably (some conflicting authority exists in the District Courts and no holding to date in the Supreme Court) even if third party entitlement is asserted.
The Patents Act provides that allowence of the application shall be "conclusive evidence" that the patent application meets the requirements of the unity of the invention and the "form" of the application, including the specification and drawings. Current Patent Office decisions hold that this statutory presumption is rebuttable, although the bar for rebuttal is set very high.
The grounds of invalidity under which a patent may be revoked reflect the patent grant requirements set forth in the EPC. Italian courts focus mainly on the issues of novelty and inventive step, whereas formal requirements such as added matter and sufficiency are more likely to be kept in the background.
Lack of novelty or inventive step and violation of the description requirements are often asserted as major grounds for invalidity. Novelty is negated against an invention that was publicly known prior to the filing of the patent application, an invention that was publicly worked prior to the filing of the patent application, and an invention that was described in a publication or was made available through the Internet, etc. Inventive step is negated against an invention if a person of ordinary skill in the art of such invention could have easily made the invention based on a publicly known invention, etc. The description requirements, which are often disputed, include: (i) the support requirement, which stipulates that an invention according to a claim should not fall outside the scope of the matter described in the detailed description of the invention; (ii) the clarity requirement, which stipulates that an invention for which a patent is sought must be clear; and (iii) the enablement requirement, which stipulates that the detailed description of the invention should be made clearly and sufficiently for a person skilled in the art to which the invention for a patent is being sought belongs to be able to work such invention. It should be noted that violation of a formality requirement, such as the unity-of-invention requirement, will constitute a reason for rejection but will not constitute grounds for invalidity.
Lack of inventive step is still the most common applied ground of invalidation of patents in Norway. From the recent years we do however, also have examples of invalidation based on insufficient disclosure and added matter.
Lack of clarity of the claims may be a ground for refusing to grant a patent, but lack of clarity of the claims cannot be invoked as ground for invalidation after a patent has been granted.
Patent may be invalidated the grounds that the invention does not meet the patentability requirements set forth in the relevant provisions of the Industrial Property Law, i.a. lack of novelty, lack of inventive step and/or lack of industrial applicability.
In 2015, an additional grounds of invalidity have been introduced. The patent may invalidated due to insufficient disclosure (previously argued within the “lack of industrial applicability” ground), i.e. if the patent description does not describe the invention clearly and comprehensively, in a way enabling an expert to implement it. Also, a separate ground occurs if the patent was granted for an invention different than in the one applied for.
Finally, the patent may invalidated if granted to a person who was not entitled to submit the application.
In accordance with IPC, patents shall be totally or partially null: a) if its object does not meet the requirements of novelty, inventive step and industrial application; b) when any essential formalities for the grant have been disregarded; or c) when public policy rules have been breached; d) when the protected subject matter is not patentable; e) the title and summary of the patent relates to a subject matter different from the invention; and f) the invention has not been described in a sufficient manner for it to be carried out by a skilled person.
In general, patents shall be totally or partially annullable if the holders are not entitled to them, namely: a) if the right does not belong to them; or b) if they were granted with disregard for the rights set forth in the procedural rules set out in the IPC.
Added matter is not listed as a specific ground for revocation, rather for rejection.
Article 1398 of the RUCC stipulates the following grounds for patent invalidation (in full or in part):
1) lack of industrial applicability, novelty and/or inventive level;
2) insufficiency of disclosure of invention in the application;
3) new matter;
4) double patenting (identical inventions with the same priority);
5) wrong inventorship or ownership.
There are some requirements for the valid grant of a patent in Russia, which are not reflected in the available grounds of invalidity upon which a patent may be revoked in Russia: lack of unity of invention, wrong attribution of priority
The grounds of patent invalidity are exhaustively stated in section 80(1) of the PA:
(a) the patent is not a patentable invention, i.e. it lacks novelty, it does not involve an inventive step, or is incapable of industrial application, or that it is an invention the publication or exploitation of which will generally be expected to encourage offensive, immoral or anti-social behaviour;
(b) the patent was granted to a person who was not so entitled;
(c) the specification of the patent does not disclose the invention clearly and completely for it to be performed by a person skilled in the art;
(d) ¬the matter disclosed in the specification of the patent extends beyond that disclosed in the application for the patent as filed;
(e) an amendment or correction had been made to the specification of the patent or an application for the patent which should not have been allowed;
(f) the patent was obtained fraudulently, on any misrepresentation or on any non-disclosure or inaccurate disclosure of any prescribed material information; and
(g) the patent is one of 2 or more patents for the same invention having the same priority date and filed by the same party or his successor in title.
The grounds of patent invalidity are provided by Article 133(1) of the KPA. Key grounds include the following: non-eligibility; lack of novelty; lack of inventiveness; violation of description requirement of claims or specification; and non-assignment of right from the inventor. The invalidation grounds based on non-assignment of right from inventor can only be raised by the inventor or its lawful assignee. Meanwhile, the grounds discussed above are not precluded for the reason that a patent is validly granted..
Lack of novelty and/or inventive step; the invention not being enabled by the disclosure; added subject-matter; expansion of the scope of the patent after grant; and, the patent has been granted to someone not entitled to the invention. In the latter case the action must be filed by the person that actually is entitled to the patent.
Lack of clarity is not in itself a ground for invalidity but may form part of a lack of enablement ground (and unclarities may limit the scope of protection).
A patent is invalid if its subject-matter is not patentable. Accordingly, a patent is invalid if what is claimed is not novel, is obvious with regard to the state of the art (i.e., lacks inventive step), lacks industrial applicability or relates to unpatentable subject-matter. Further, a patent is invalid if the invention is not described sufficiently clear and precise in the patent specification for it to be carried out by a person skilled in the art, if the subject-matter of the patent goes beyond the content of the application, or if the patentee is neither the inventor nor his successor in title.
To be eligible for patent protection under Taiwan’s Patent Act, an invention shall meet all the requirements of “Utility”, “Novelty”, and “Non-Obviousness”. Patent protection shall be rejected for an invention if this invention is not industrially applicable, or this invention was disclosed in a printed publication or was publicly exploited or known prior to the filing of the patent application, or this invention can be easily made by a person ordinarily skilled in the art based on prior art, the invention will not be patented. Even if the invention is patented, the granted patent right could be revoked by the patent office through an invalidation proceeding initiated by any persons who would like to challenge the patent’s validity.
A patent can be invalidated based on one of the following grounds:
- the patented invention is not new;
- the patented invention does not have an inventive step (i.e., is obvious to a person ordinarily skilled in the art);
- the patented invention is incapable of industrial application;
- the patented invention constitutes a non-patentable subject matter, such as naturally occurring microorganisms and their components; plants or animals; extracts of plants or animals; scientific or mathematical principles or theories; computer programs; methods of diagnosing, treating or curing animal or human disease; and anything contrary to public order, morals, public health or welfare;
- The patentee is not the true inventor or has no right to file the patent application;
- The patent is held by an unqualified person (i.e., a non-WTO national/resident).
Accepted grounds for invalidation include (Article 138, IP Law):
- The invention’s subject matter does not meet the patentability criteria (not being novel, involving inventive step and being applicable to the industry)
- The invention’s subject matter has not been described in a sufficiently explicit and comprehensive manner to enable a person skilled in the technical field concerned to re-create the invention.
- The patent’s subject matter exceeds the scope of the first formed of the application and the patent covers several inventions, which should have been the subject of separate patent applications.
- The patent holder has been proven not to have the right to a patent.
- The extent of protection of the patent is exceeded.
- The key grounds of invalidity are:
- The invention is not patentable – Section 1 Patents Act sets out the grounds on which an invention is not patentable:
- it is not novel or is anticipated – the invention disclosed in the patent is anticipated by the “state of the art” at the priority date. The “state of the art” includes anything made available to the public anywhere in the world, including other patent applications with an earlier priority date.
- it lacks an inventive step – the invention is obvious to a person skilled in the art (i.e. the technical field of the invention), having regard to any part of the state of the art or their common general knowledge;
- is not capable of industrial application; or
- is excluded from patentability as such, due to being:
- a discovery, scientific theory or mathematical method;
- a literary, dramatic, musical or artistic work or any other aesthetic creation;
- a scheme, rule or method for performing a mental act, playing a game or doing business;
- a program for a computer;
- the presentation of information;
- contrary to public policy; or
- a method of treatment or diagnosis of a human or animal.
Issued patents are presumed valid by statute. In order to show a patent is invalid, the accused infringer needs to prove by clear and convincing evidence that the patent fails one of the requirements for patentability found in 35 U.S.C. §§ 101, 102, 103, and 112.
Section 101 deals with subject matter eligibility. A patent must claim a new and useful process, machine, manufacture, or composition of matter, or an improvement thereof, and may not be directed solely to an abstract idea, natural phenomenon, or law of nature. Section 102 deals specifically with novelty, or whether all the claimed elements are present in a single piece of prior art. Section 103 deals with obviousness. If no one piece of prior art discloses the claim elements, the claim may still be invalid if it was obvious before the effective filing date in light of a single reference or a combination of references. And finally, Section 112 deals with the supporting disclosure, as the elements claimed by the patent must be sufficiently described in the patent’s specification.
A patent can be invalidated on the following grounds (Article 96.1, IP Law):
- The applicant did not have the right to file an application for the patent.
- The invention did not meet the patentability criteria applicable at the time the patent was issued.