What does the requirement that a patent needs to be ‘new’ mean?

Question

The Patents Act 1977 S1(1) sets out the conditions for a patent to be granted, what are the requirements of the first condition – that the invention must be ‘new’?

Answer

The Patents Act 1977 S1(1) sets out the conditions for a patent to be granted. First, the invention must be ‘new’. S2(1) explains that this means that it ‘does not form part of the state of the art’, which under S2(2) is defined as all matter available to the public on the priority date of the invention, whether by written or oral description.

Disclosure to individuals in confidence does not invalidate a patent, but there must be an express or implied confidentiality agreement as regards the information (MMI Research v Cellxion).

The question of novelty can be described as whether the invention has been ‘anticipated’ in any way. It must be noted that the anticipation refers to public availability in not only the country of registration, but any other country in the world (Bainbridge, 2012).

Anticipation requires an ‘enabling disclosure’, which would enable an individual skilled in the art of that field of technology to put the invention into effect, and that they could recognise and rectify any errors in the invention (Bainbridge, 2012). An individual skilled in the art need not be of exceptional skill, but would be an ordinarily skilled person in that art (Synthon BV v Smithkline).

References

Bainbridge, D., (2012) Intellectual Property. Ninth edition, Pearson Education Limited.

MMI Research Ltd v Cellxion Ltd [2009] EWHC 418

Synthon BV v Smithkline Beecham plc [2003] RPC 33

The Patents Act 1977