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5.6.5.4 Novelty - specific examples

Date Published

Key Legislation:

Patents Act:

  • s7(1) Novelty
  • s18(1)(b)(i) Patentable inventions
  • s24 Validity not affected by making information available in certain circumstance
  • s102 What amendments are not allowable?
  • s104 Amendments by applicants and patentees  
  • Schedule 1 Dictionary

Patents Regulations:

  • reg 2.2 Information made publicly available--recognised exhibitions
  • reg 2.2A Information made publicly available--learned societies
  • reg 2.2B Information made publicly available--reasonable trial of invention
  • reg 2.2C Information made publicly available--other circumstances
  • reg 2.2D Information made publicly available without consent--period

Range of Variables

A claim to a range of variables will be anticipated by a prior art document disclosing a narrower range, or a single variable that falls within the claimed range. The claim will not be anticipated by a prior art document disclosing a broader range of variables or a range that overlaps the claimed range, unless that document also discloses an example of a variable falling within the claimed range. This applies whether or not the claimed invention is allegedly a selection. This is because there are no clear and unmistakable directions for a skilled addressee to select the particular claimed range of variables from the broader or overlapping range disclosed earlier.

Inherent disclosures and Inevitable Results

A claim will lack novelty if every feature of the claim is explicitly or inherently disclosed.

A property or characteristic of a substance or material will be inherently or implicitly disclosed whenever that substance or material is disclosed. If that property or characteristic is a feature of a claim, prior art disclosing the substance or material will also disclose the property or characteristic, whether it is explicitly disclosed or not, and regardless of whether that property is well-known or has been newly identified.

For example, a claim is to “an anti-cancer aspirin.”, while the citation discloses aspirin that may be used for pain relief but does not disclose aspirin’s anti-cancer activity. 

The claim is interpreted as being to the compound aspirin per se, wherein the compound has a particular property (anti-cancer). The new property does not change the chemical compound, rather, the new property is inherent in the compound because of the compound’s physiochemical attributes. The compound, with this property, existed prior to the discovery of the property and therefore the property is inherent to the compound. Claims to the compound per se would not be novel because any person, in preparing aspirin from the citation, would inevitably produce the compound with the new (but unknown) property. However, claims to a method for treating cancer using aspirin would be novel.

An inherent property or characteristic of a substance or material will always cause the same result when applied in the same situation and where a prior art document contains instructions to do something that will inevitably result in an outcome that falls within the claim under examination, that prior art document will deprive the claim of novelty. This will be the case whether or not the skilled addressee understands or perceives the results that have been achieved.

An example is the mechanism of action of a known drug for a known therapeutic use. The mechanism of action of a drug, or how the drug acts in the body is an inherent property of the drug and will always occur or be present when that drug is administered. A claim to a method of treatment using a known drug for a known therapeutic use that also defines how the drug elicits its effect (that is, the mechanism of action of the drug) will lack novelty in light of a prior disclosure of the known drug being used for the known therapeutic use, even if the mechanism of action of the drug has not been disclosed before.

For example, compound X is known in the prior art for treating Alzheimer’s disease. The claim under examination is for “a method of treating Alzheimer’s disease by administering compound X and thereby modulating receptor Y”. As the modulation of receptor Y is how compound X acts in the body, it is considered an inherent property of compound X and is an inevitable consequence of the administration of compound X. While this mechanism of action of compound X has not been disclosed in the prior art, this claim is not novel because it is essentially a claim for a method of treatment, using a known compound for its known therapeutic use. While the elucidation of compound X’s mechanism of action is indeed a new discovery, it is merely new information about how compound X works in the body to treat Alzheimer’s disease. It follows that, necessarily, anytime compound X is administered, including in the instance of the prior art, it will cause receptor Y to be modulated. Therefore, this feature of the claim is inherently disclosed anytime the administration of compound X is disclosed.

Relevant case law

The law around anticipation by inherent disclosures or inevitable result comes from General Tire & Rubber Co. v Firestone Tyre & Rubber Co Ltd (1972) RPC 457 at pages 485-486:

“If the prior inventor’s publication contains a clear description of, or clear instructions to do or make, something that would infringe the patentee’s claim if carried out after the grant of the patentee’s patent, the patentee’s claim will have been shown to lack the necessary novelty, that is to say, it will have been anticipated. The prior inventor, however, and the patentee may have approached the same device from different starting points and may for this reason, or it may be for other reasons, have so described their devices that it cannot be immediately discerned from a reading of the language which they have respectively used that they have discovered in truth the same device; but if carrying out the directions contained in the prior inventor’s publication will inevitably result in something being made or done which, if the patentee’s patent were valid, would constitute an infringement of the patentee’s claim, this circumstance demonstrates that the patentee’s claim has in fact been anticipated.”

Novozymes v Danisco (2013) FCAFC 6 reaffirmed the law on inevitable results and found that a claim requiring the production of an emulsifier was anticipated by a prior publication that disclosed the production of monoglycerides, without disclosing that monoglycerides act as/are emulsifiers (see paragraphs 105 - 110).

The question of novelty of a claim to a known compound used for its known therapeutic use, but also defining its previously unknown mechanism of action was examined in Otsuka Pharmaceutical Co. Ltd v Generic Health Pty Ltd (no 4) (2015) FCA 634, at paragraphs 320 - 321:

"Novelty of invention is not provided merely because information given as part of the definition of the invention in a claim is new information. With specific reference to claims 1 and 7, new information is provided by the feature that aripiprazole can be used to treat a patient suffering from disorders of the central nervous system associated with the 5-HT1A receptor. However, the disorders referred to were part of the known symptoms of schizophrenia. The provision of information that certain of the then known symptoms of schizophrenia are also associated with the 5-HT1A receptor is really no more than an elucidation of the action of the known carbostyril compounds, including aripiprazole, in treating schizophrenia, and a contribution to knowledge of the possible aetiology of those particular symptoms. These accretions to knowledge, without more, do not provide novelty of invention. They are simply aspects of knowledge, albeit new information, about the then known therapeutic use (the treatment of schizophrenia) of a then known compound.”

This decision was not overturned on appeal: Otsuka Pharmaceutical Co. Ltd v Generic Health Pty Ltd (no 2) (2016) FCAFC 111.

Amended Reasons

Amended Reason Date Amended

Published for prod

Published for testing
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