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6.3.8.6.1 Novelty

Date Published

Key Legislation:

Patent Cooperation Treaty (PCT):

  • Article 33 The International Preliminary Examination 

Regulations under the PCT:

  • Rule 64 Prior Art for International Preliminary Examination
  • Rule 64.1 Prior Art

PCT ISPE Guidelines:

A claimed invention shall be considered novel if it is not anticipated by the prior art. The prior art is defined as "everything made available to the public anywhere in the world by means of written disclosure (including drawings and other illustrations)" before the priority or international filing date of the international application. [Art 33(2) Rule 64 PCT/GL/ISPE/12 at Chapter 12]

A document takes away the novelty of any claimed subject matter when every element or step is explicitly or inherently disclosed within the prior art defined in Rule 64.1 (see paragraph 11.01 of the PCT International Search and Preliminary Examination Guidelines), including any features implicit to a person skilled in the art (see paragraph 13.11 of the Guidelines for a definition of the "Person Skilled in the Art") (see paragraph 12.01 of the Guidelines).

In considering novelty (as distinct from inventive step) it is not permissible to combine separate items of prior art together (see paragraph 13.12 of the PCT International Search and Preliminary Examination Guidelines). However, if the document refers explicitly to another document to, for example, provide more detailed information on certain features, the teaching of this latter document may be regarded as incorporated into the relevant document, to the extent indicated in the primary document.

Also, a dictionary or the like may be used to interpret special terms used in the document. However, it is not correct to interpret the teaching of the document such that well-known equivalents, which are not disclosed in the document, are included. This is a matter for obviousness.

Novelty and obviousness are different criteria. Novelty does exist if there is a difference between the claimed invention and the prior art, and this difference could not have been considered part of the common general knowledge at the time of publication of the prior art (note, however that some authorities have a different approach on this - see the Appendix to Chapter 12 of the PCT International Search and Preliminary Examination Guidelines).

However, the prior art disclosure must be an enabling disclosure (see paragraph 12.02 of the PCT International Search and Preliminary Examination Guidelines). A chemical compound, the name or formula of which was mentioned in a document, is not considered as known unless the information in the document, together, where appropriate, with knowledge generally available on the effective date of the document, enable it to be prepared and separated or, for instance in the case of a product of nature, only to be separated.

In considering novelty, it should be borne in mind that a generic disclosure does not usually take away the novelty of any specific example falling within the terms of that disclosure, but that a specific disclosure does take away the novelty of any generic claim embracing that disclosure, for example, a disclosure of copper takes away the novelty of metal as a generic concept, but not the novelty of any metal other than copper, and one of rivets takes away the novelty of fastening means as a generic concept, but not the novelty of any fastening other than rivets.

In the case of a published document, the lack of novelty may be apparent from what is explicitly stated in the document itself. Alternatively, it may be implicit in the sense that, in carrying out the teaching of the prior document, the skilled person would inevitably arrive at a result falling within the terms of the claim. Lack of novelty of this kind should be raised by the examiner only where there can be no reasonable doubt as to the practical effect of the prior teaching.

In interpreting claims for the consideration of novelty, the examiner should have regard to the guidance given in paragraphs 5.20 to 5.41 of the PCT International Search and Preliminary Examination Guidelines. In particular, the examiner should remember that statements in the claim reciting the purpose or intended use must be evaluated to determine whether the recited purpose or intended use results in a structural difference (or in the case of process claims, a difference in the process steps) between the claimed invention and the prior art. Non-distinctive characteristics of a particular intended use should be disregarded (see paragraphs 5.21 to 5.23 of the PCT International Search and Preliminary Examination Guidelines). For example, a claim to a substance X for use as a catalyst would not be considered to be novel over the same substance known as a dye, unless the use referred to implies a particular form of the substance (for example, the presence of certain additives) which distinguishes it from the known form of the substance. That is to say, characteristics not explicitly stated but implied by the particular use should be taken into account. For example, if a claim refers to a "mould for molten steel", this implies certain limitations for the mould. Therefore a plastic ice cube tray with a melting point much lower than that of steel would not come within the claim which would thereby be considered as being novel.

When interpreting ‘product by process’ claims, the approach to be followed is given in Appendix A5.26[1] of the PCT International Search and Preliminary Examination Guidelines.  That is, a product is not rendered novel merely by the fact that it is produced by means of a new process. See also 6.1.11.3 Searching Product by Process Claims.

Amended Reasons

Amended Reason Date Amended

Published for testing
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