Since European patents are granted for inventions that are new, involve an inventive step and are susceptible of industrial application, novelty is the first requirement an invention must meet to be eligible for a patent.
It goes without saying that patents should not be granted for an invention which merely copies something that is already known.
An invention is therefore new if its technical features have not been disclosed in the same combination prior to either its filing or the claimed priority date, i.e. it is not part of the state of the art.
More about priority:
Patent applicants have the right to file an identical application in another signatory country of the Paris Convention within a certain time frame without the risk of their first application being assessed as novelty-destroying in subsequent application procedures in other jurisdictions.
In terms of novelty, a priority right mainly means that the filing date of the first application is considered to be the effective date for determining the state of the art of any subsequent applications within 12 months. The filing date of the first application is then defined as the priority date for any subsequent applications for the same invention.
HOW NOVELTY IS ASSESSED
When evaluating the novelty of an invention, the aim is to identify technical features that are known in the prior art, in the same combination.
The patent examiner needs to follow a series of steps in order to assess whether an invention is new:
- Step 1: Establish the state of the art/prior art
- Step 2: Determine the technical content of the prior art
- Step 3: Evaluate the differences between the technical features of the invention and the prior art
The following example sets out these steps in detail:
The present invention relates to a novel stop for doors and windows.
Known stops intended for preventing doors from slamming shut, for example due to a draught, comprise wedges which are wedged underneath the doors.
The disadvantage of these stops is that they cannot be used to stop windows from slamming shut. They can be used for doors since the wedges can be positioned in the desired location between the floor and the door leaf, which is not possible in the case of windows.
The present invention therefore aims to provide a novel door and window stop which can be used in a much more versatile way than any found in the prior art, i.e. wedging open both doors and windows in a large pivoting range and securing tilted windows.
1. A stop (1) for doors and windows comprising
a) a body made of plastic,
b) said body having a thicker round region (1) and an adjoining
narrow region (2) tapering to a tip, characterised in that
c) the width (b) of the body between 3 cm and 13 cm
d) the thickness of the body being less than 7 cm
e) the stop comprises a section made of rubber.
2. The stop as claimed in claim 1, characterised in that the width of the body is approximately 9–13 cm, preferably 10 cm, corresponding to a circular segment of a radius of 3.5–6.5 cm, preferably 5 cm.
3. The stop as claimed in claim 1, characterised in that the outer shape of the body corresponds to a circular segment.
How does the examiner evaluate the novelty of the invention?
The examiner carries out an analysis in order to narrow down identify those documents, out of the millions available, that potentially relate to the particular invention. To this end, the examiner takes a closer look at:
Keywords that help to classify the claimed invention: such as stop, separator, stopper and wedge
The classes involved, such as E05C17/54 (devices for holding wings open) and E05F5/02 (braking devices)
The uses claimed for the invention, such as window stopper, window opener and window separator
The date of the claimed invention as well as the dates of the prior art to ensure they can be considered as prior art
For this example, let’s assume that this application was filed on 15 April 20020, and the prior art (D1: US 3706112) was published on 19 December 1972. This means that the prior art was published before the filing date of the application as priority was not claimed.
What happens next?
As the aim of the novelty evaluation exercise is to determine the technical content of the prior art, each feature needs to be analysed thoroughly. This enables the examiner to interpret the meaning of the disclosure (i.e. the meaning a person skilled in the art would have ascribed to it at the time of its publication).
As mentioned above, we have assumed that document US 3706112 dated 19 December 1972 has been identified.
1. In general, different embodiments may not be combined unless there is an explicit link between them.
For example, if a document discloses both a square-shaped stopper made of wood and a round stopper made of rubber, this does not mean that a square-shaped stopper made of rubber can be directly and unambiguously derived from the document.
However, if the document states that “the square-shaped stopper may also be made out of any of the materials mentioned for the other embodiments”, this means that a square-shaped stopper made of rubber is indeed disclosed.
2. Special attention needs to be paid to the implicit features of the disclosure, i.e. the clear and unambiguous implied consequence of what is explicitly mentioned.
Let’s look at an invention claiming:
“An electronic portable music player comprising a display and a selection means.”
The claim does not specify a power source. Since electronic portable music players cannot be operated without a power source, this feature has to be considered implicit.
By identifying and understanding the prior art features, the examiner can evaluate whether the selected documents are actually relevant in relation to the claimed invention and proceed to step 3.
What happens next?
Once the state of the art has been established and its content determined, the final step is to ascertain whether the invention in question differs from the prior art. At this stage the examiner needs to compare the similarities and differences to assess whether the claimed invention is new or not.
Taking our example, a comparison chart could look like this:
When comparing the claimed invention and the prior art, the following aspects need to be taken into account:
Wording, referring to either redundant features or generic/specific terms
Claim: A watering can made of metal
Prior art: A watering can made of aluminium
Since a generic term “metal” is anticipated by a specific term “aluminium”, the subject-matter of the claim is not new.
Let’s reverse the example:
Claim: A watering can made of aluminium
Prior art: A watering can made of metal
In this case, the subject-matter claimed is new because the disclosure of a class in the prior art does not specifically disclose the individual components of that class.
Claim: 983 MhZ
Prior art: 900 Mhz–1,200 Mhz
If "983 MHz" is not explicitly disclosed in the prior art, the subject-matter is new.
Difference in range
Claim: Between 10 and 90 minutes
Prior art: Between 25 and 35 minutes
The prior art shows specific examples within the claimed range (e.g. 25 and 35 minutes are both examples of between 10 and 90 minutes). Therefore, the subject-matter claimed is not new.
Difference in drawings/photos
Features, such as size, ratio and dimensions, may be derived from drawings or photos which are considered to be the state of the art. However, it should be noted that, if they contain contradictory information, the description takes precedence
over any dimensions obtained from drawings or photos.
Often, a figure serves only to give a schematic explanation of the subject-matter of a patent and not to represent it in every detail. If such cases, the examiner cannot conclude whether the disclosed teaching purposively excludes a feature which is not represented.
Differences resulting from the disclaimer
The subject-matter of a claim may be restricted to using a negative limitation, i.e. expressing what the claim is not, which typically involves excluding specific embodiments or areas from a general feature.
LACK OF NOVELTY
Once the evaluation is complete, the examiner presents their findings and the reasons for them in the search report and opinion.
In the search report, the examiner cites each relevant document from the prior art, assigning one or more codes to indicate the relevance and type of the document. Click here to see an example.
In the search opinion, the examiner should specify the novelty objections to any searched claim for which they have cited a novelty-challenging document in the search report.
Therefore, when analysing the novelty of a claim, the examiner should:
- Indicate the exact location of disclosure of each feature, i.e. which passage or figure of the cited document discloses that feature
- State why a given feature is seen as implicit, i.e. if it is directly and unambiguously derivable from the disclosure?
- Give detailed reasons to support any novelty objections to independent claims, or provide a brief explanation for any novelty objections to dependent claims
The present application does not meet the requirements of Article 52(1) EPC, because the subject-matter of claim 1 (as far as it can be understood - for clarity objections see point 4) is not new in the sense of Article 54(1) and (2) EPC. The document D1 is regarded as being the closest prior art to the subject-matter of claim 1, and discloses (the references in the parentheses applying to this document):
An airframe, comprising:
a structural reinforcement member including a base flange (30) and a leg (46) extending from the base flange, wherein the structural reinforcement member has a terminal end region that includes a terminal edge (see fig.4) of the structural reinforcement member; and
a skin (12) operatively coupled to the base flange opposite the leg and extending longitudinally beyond the terminal end region of the structural reinforcement member, wherein the skin and the structural reinforcement member collectively define a run-out region encompassing the terminal end
region of the structural reinforcement member and a portion of the skin adjacent to the terminal end region of the structural reinforcement member, and further wherein within the run-out region the skin is more flexible than within portions of the skin that are adjacent to the run-out region (see fig.4).”
Alternatively, if no novelty-challenging documents are found, the examiner can proceed to assessing the next patentability requirement, which is inventive step.
To find out more, see the course Search reports and written opinions.
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