6.3.8.6.1 Novelty

Also in this Chapter:​​​​​​​

• 6.3.8.6.2 Inventive Step

• ​​​​​​​6.3.8.6.3 Industrial Applicability

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:

• Paragraph 5.20 Interpretation of Claims

• Paragraph 5.21 "Use" Claims

• Paragraph 5.23 Preamble

• Paragraph 5.41 Clarity of Other Terms

• Appendix to Chapter 5 Product by Process Claims

• Paragraph 11.01 Prior Art Generally

• Chapter 12 Novelty

  • Paragraph 12.01-12.02 Meaning of Novelty

• Appendix to Chapter 12

• Paragraph 13.11 The "Person Skilled in the Art"

• Paragraph 13.12 Combining Teachings

Related Chapters:

• 6.1.11 Search Procedure

• 6.1.11.1 Overview - Novelty / Inventive Step

• 6.1.11.2 Inventive Step

• 6.1.11.3 Searching Product by Process Claims

On this page

• Introduction

• Novelty

  • Enabling disclosure

• Considering novelty

  • Interpreting claims

  • Explicit and implicit disclosures

  • Generic and specific disclosures

  • Product by process

• Novelty and obviousness

Introduction

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. See Article 33(2), Rule 64, and PCT/GL/ISPE/12 at Chapter 12.

Novelty

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 PCT/GL/ISPE/12 at paragraph 11.01). This includes any features implicit to a person skilled in the art. For a definition of the ‘Person Skilled in the Art’ see PCT/GL/ISPE/12 at paragraph 13.11. See also paragraph 12.01 of the PCT International Search and Preliminary Examination (ISPE) Guidelines.

Enabling disclosure

The prior art disclosure must be an enabling disclosure (see PCT/GL/ISPE/12 paragraph 12.02). A chemical compound mentioned by name or formula 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, in the case of a product of nature, only to be separated.

Considering novelty

Interpreting claims

The examiner should have regard to the guidance given in paragraphs 5.20 to 5.41 of the PCT ISPE Guidelines when interpreting claims for the consideration of novelty. 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 between the claimed invention and the prior art. 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 PCT/GL/ISPE/12 at paragraphs 5.21 to 5.23).

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 (such as the presence of certain additives) which distinguishes it from the known form of the substance. Specifically, characteristics not explicitly stated but implied by the particular use should be taken into account. For example, a claim that refers to a ‘mould for molten steel’ implies certain limitations for the mould to withstand high temperatures. A plastic ice cube tray with a melting point much lower than that of steel would not be within the scope of the claim. Therefore, the claim would be considered as being novel.

Explicit and implicit disclosures

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.

Generic and specific disclosures

In considering novelty, it should be noted that a generic disclosure does not usually take away the novelty of any specific example falling within the terms of that disclosure, but a specific disclosure does take away the novelty of any generic claim embracing that disclosure.

Examples

• A disclosure of copper takes away the novelty of metal as a generic concept, but not the novelty of any metal other than copper.

• One of rivets takes away the novelty of fastening means as a generic concept, but not the novelty of any fastening other than rivets. 

Product by process

When interpreting ‘product by process’ claims, examiners should follow the approach in Appendix A5.26[1] of the PCT ISPE 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.

Novelty and 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. However, some authorities have a different approach on this – see Appendix to Chapter 12 of the PCT ISPE Guidelines.

In considering novelty (as distinct from inventive step) it is not permissible to combine separate items of prior art together (see PCT/GL/ISPE/12 at paragraph 13.12). However, if a 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.

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.