Novelty (patent)

Novelty (patent)

Novelty is a patentability requirement. An invention is not patentable if the claimed subject matter was disclosed before the date of filing, or before the date of priority if a priority is claimed, of the patent application.

In some countries, such as the United States, Canada, Australia and Japan, a grace period exists for protecting an inventor or their successor in title from authorised or unauthorised disclosure of the invention before the filing date. That is, if the inventor or the successor in title publishes the invention, an application can still be validly filed which will be considered novel despite the publication, provided that the filing is made during the grace period following the publication. The grace period is usually 6 or 12 months. This type of novelty bar is sometimes known as a relative novelty bar.

In other countries, including European countries, any act that makes an invention available to the public, no matter where in the world, before the filing date or priority date has the effect of barring the invention from being patented. Examples of acts that can make an invention available to the public are written publications, sales, public oral disclosures and public demonstrations or use. This is known as an absolute novelty requirement.

Local novelty (as is currently the requirement in New Zealand) only regards publications, uses or sales that have taken place within that jurisdiction to be novelty destroying. Local novelty by publication is now largely extinct under New Zealand practice. This leaves only “local novelty by use”, which is rather limited, even to the point of irrelevance. Therefore, to all intents and purposes, New Zealand patent law already appears to operate on a de facto absolute novelty basis.

The grace period should not be confused with the priority year defined by Paris Convention for the Protection of Industrial Property. The priority year starts when the first filing in a Contracting State of the Paris Convention is made, while the grace period starts from the pre-filing publication.