Novelty

Contents

Chapter 1. Definition of novelty

Section 1.1. Principle

Section 1.2. Documents forming part of the state of the art for novelty

Section 1.3. Case of French validations of European patents

Chapter 2. Public Accessibility of a Disclosure

Section 2.1. Written Disclosure

Section 2.2. Oral disclosure

Section 2.3. Previous use

Section 2.4. Public and confidentiality

Section 2.5. Accessibility and effective access

Chapter 3. Non-enforceable disclosures

Section 3.1. In case of obvious abuse

Section 3.2. In case of recognized official exhibitions

Chapter 4. Content of disclosures

Section 4.1. Explicit features

4.1.1. Description or drawings

4.1.2. The abstract

4.1.3. Sufficient disclosure / defective

4.1.4. Fortuitous disclosure

4.1.5. References to other documents

4.1.6. "The individual anticipates the general"

Section 4.2. Non-explicit features

4.2.1. Implicit features

4.2.2. Equivalent disclosures

Chapter 5. Using Disclosures to Attack Novelty

Section 5.1. Principle: no combination

Section 5.2. exceptions

Chapter 6. Assessment of novelty according to the wording of the claims to be attacked

Section 6.1. Invention and range of values

6.1.1. Introduction

6.1.2. Selection in an individualized list

6.1.3. Selection of a sub-range in a disclosed range

6.1.4. Selecting a range containing a value disclosed

6.1.5. Selection of a sub-range intersecting a disclosed range

Section 6.2. Category of claim

6.2.1. Therapeutic applications

1) First therapeutic application

2) Second therapeutic application

6.2.2. Process

6.2.3. Method for + destination

6.2.4. Process for manufacturing a new and inventive product

6.2.5. Product

6.2.6. Product defined by a process ("product by process")

6.2.7. Product for + destination

6.2.8. use

6.2.9. Using a new and inventive product

6.2.10. Use of a process for + destination

Section 6.3. Examples

See the latest changes

Chapter 1. Definition of novelty

Section 1.1. Principle

Article L611-11 CPI specifies that an invention is considered new if it is not included in the state of the art.

Section 1.2. Documents forming part of the state of the art for novelty

The state of the art includes:

  • any public disclosure (written or oral), any public use before the filing date of the patent application (L611-11 CPI2nd paragraph);
  • the French / European / International patent applications whose filing date is before the date of filing of the application concerned, and whose publication date is later (L611-11 CPI3rd paragraph together L611-14 CPI).

It is true that the exact wording of the article L611-11 CPI, 3rd paragraph is "European or international patent application designating France", but:

  • European patent applications today necessarily refer to France (A79 (1) EPC) except express withdrawal (but it almost never happens ...
  • the filing of a PCT application is equivalent to the designation of all the Member States (R4.9.a PCT).
    • Some have already told me that "France was not designated in a PCT application: Europe is designated” ;
    • No no and no ... the Office (EPO) which is used for entry into phase and the designation which can only designate one Contracting State (and Europe is not Contracting) should not be confused.

By "deposit date"(From the article L611-11 CPI, Third paragraph), is the earliest priority date (Court of Appeal of Paris, Pole 5, 1st ch., September 23, 2014 and L612-7 CPI paragraph 5).

It should be noted that, normally, it is necessary to verify that European or international patent applications designate France to be able to be included in the state of the art. Nevertheless, this verification is now almost useless, since, as soon as it is filed, these requests are deemed to designate France (respectively A79 (1) EPC and R4.9.ai PCT).

Section 1.3. Case of French validations of European patents

Should it be considered that the state of the art opposable to a French part of a European patent is:

  • that given by the French code on the pretext that the patent produces effects in France?
  • that given by the European Patent Convention (EPC) on the grounds that the patent is simply a validation of a European patent?

My answer is simple: the 2.

Indeed :

  • theA138 (1) EPC foresees a nullity for lack of novelty (and therefore a reference to the state of the art defined in the EPC)
  • theA139 (2) EPC provides that any national application or national patent may be usable as relevant prior art (insofar as it would be against a national application).

From then on, the A139 (2) EPC implicitly returns to the article L611-11 CPI3rd paragraph.

On the last point, I was asked about the wording "A national patent application or a national patent of a Contracting State"Did not cover the requests European / International mentioned in L611-11 CPI3rd paragraph.

In fact, I think it covers those demands European / International which are therefore very opposable as "prior national rights“.

Indeed :

  • an international patent application has the value of a regular national filing (A11.4 PCT) and therefore it must be considered that it is a national application, including for considerations of prior art;
  • a European application has the value of a regular national deposit (A66 CBE) and may be opposed as if it were a national application (A139 (1) EPC).

Chapter 2. Public Accessibility of a Disclosure

Section 2.1. Written Disclosure

A written disclosure is considered to be made available if, on the date in question, members of the public could become acquainted with it (except for confidentiality clauses, the public being understood by any person not held incommunicado, Paris District Court, c. 03, March 4, 1998 or Court of Appeal of Paris, ch. 04, September 17, 1997).

It is not necessary for the public to be aware of the disclosure, but it is sufficient that he has been able to read it (Court of Appeal of Paris, 4th ch., May 20, 1998).

Section 2.2. Oral disclosure

An oral disclosure is opposable, but still it is necessary to successfully demonstrate the content of the disclosure (Lyon Court of Appeal, 1st c. civ., December 15, 2005).

A written publication subsequent to the oral disclosure does not necessarily prove the content of the oral disclosure (Court of Appeal of Paris, 4th ch., May 28, 1999).

An attestation (even if it does not comply with the requirements of the article 202 CPC) of a person present may be accepted, but serious doubts may be raised if too much time elapses between oral disclosure and certification (eg 12 years, Court of Appeal of Paris, 4th ch., May 12, 2006)

Section 2.3. Previous use

The prior use must allow the public to apprehend the characteristics of the invention (Paris District Court, 3rd Division, 2nd Sect., April 19, 2013) or to understand the patented process (Tribunal de Grande Instance of Paris, 3rd ch, 1st September 1999).

An analysis of a product can enable the person skilled in the art to apprehend the composition of a product (C. Cass. com., May 15, 2007, No. 06-12487).

For example, an unprotected device that can be viewed and examined by visitors (Court of Appeal of Paris, ch. 04, September 17, 1997 or Rennes Court of Appeal, 2nd c., March 21, 2006) or by a fitter (Court of Appeal of Paris, ch. 04 sect. A, November 27, 2002) destroys novelty.

Section 2.4. Public and confidentiality

A person subjected to secrecy by a confidentiality clause (explicit or tacit) is not part of the public (Paris District Court, c. 03, March 4, 1998 or Court of Appeal of Paris, ch. 04, September 17, 1997).

For example, a confidential statement on a document may be sufficient to guard against disclosure (C. Cass. com., October 7, 2008, No. 07-17518), but a simple mention of retention of title is not enough.

Confidentiality is never presumed in the context of a relationship with a potential buyer (High Court of Rennes, 2nd chapter, February 10, 2003), but it is in a business relationship, for example with a service provider (Tribunal de Grande Instance of Rennes, 2nd c., September 8, 1997).

Nevertheless, as part ofclinical test, confidentiality can be implicit (Court of Appeal of Paris, ch.14, 16 January 1998, or Tribunal de Grande Instance of Paris, 3rd ch, 1st September 1999).

Section 2.5. Accessibility and effective access

For a prior art to be opposable, it must have been accessible to the public, regardless of whether the public actually became aware of it (eg airbags sold in cars are accessible even if no evidence exists a user has ever disassembled one, Paris Court of Appeal, January 15, 2014).

Chapter 3. Non-enforceable disclosures

Section 3.1. In case of obvious abuse

A disclosure may be rejected if it results from a obvious abuse with regard to the inventor (L611-13 CPI) and if it occurred in the 6 months prior to the filing date of the French application or the priority application (Court of Appeal of Paris, 4th ch., Sect. A, October 15, 2003).

Section 3.2. In case of recognized official exhibitions

Disclosure may also be excluded if it was made during a international exhibition recognized (L611-13 CPI) and that it took place in 6 months prior to the filing date of the French application or the priority application (Court of Appeal of Paris, 4th ch., Sect. A, October 15, 2003).

It is important to look closely at the list of recognized international exhibitions on the website of the International Exhibition Office.

Moreover, for this disclosure to be rejected, it must be declared when the patent application is filed (L611-13 CPI, last paragraph) and to provide the supporting statement in the 4 months after the deposit (R612-22 CPI): this proof is produced during the exhibition and details the disclosure.

Chapter 4. Content of disclosures

Section 4.1. Explicit features

4.1.1. Description or drawings

Of course, prior art discloses what is certain (C. Cass. Com., June 6, 2001, No. 98-17194) or explicitly of their description or drawings.

4.1.2. The abstract

The abstract of a patent application need not be excluded from the disclosure. Indeed, it happens regularly that only these abstracts are translated for actions in nullity (Paris District Court, 3rd Division, 1st Sect., May 24, 2011).

4.1.3. Sufficient disclosure / defective

It is necessary that the features of the invention appear sufficiently clearly so that those skilled in the art understand the invention and can, thanks to the information communicated reproduce the invention (Court of Appeal of Paris, ch. 04, September 17, 1997 or C. Cass. com., January 4, 1994, No. 91-20644).

Doubt must benefit the patentee (Tribunal de Grande Instance of Paris, 3rd ch, 1st September 1999).

If the anticipation contains an error that anticipates a characteristic, it must be discarded (Court of Appeal of Paris, 4th ch., February 22, 2008 or INPI Examination Guidelines, IC-VII 4.2.a).

4.1.4. Fortuitous disclosure

A fortuitous disclosure is a relevant disclosure while, however, the technical problem is quite different

In view of the position of the French case-law, it is necessary to look at the function of the means disclosed (Court of Appeal of Paris, Pole 5, 2nd ch., April 11, 2014, MS Development et al c. Plastic Castings of the Midi or C. Cass. com., March 12, 1996, No. 94-15283): therefore, if these means are fortuitous, it is unlikely that the function in the anticipation is identical to the function of the means in the invention.

4.1.5. References to other documents

If reference is made to another document in a prior art, the combination of these documents can not be used to attack the novelty of a claim (Paris District Court, 3rd c., 2nd Sect., 15 February 2008): this combination is an inventive step even though it is explicitly mentioned.

4.1.6. "The individual anticipates the general"

The disclosure of a particular technical element destroys the novelty of a claimed general technical means (INPI Examination Guidelines, IC-VII 4.2.d): the opposite is not true (Paris District Court, 3rd Division, 2nd Sect., March 30, 2007).

Section 4.2. Non-explicit features

4.2.1. Implicit features

A characteristic can be implicit (Court of Appeal of Paris, pole 5, ch 1, October 27, 2010) provided it is necessary and unavoidable (INPI Examination Guidelines, IC-VII 4.2.c).

In this case, it can be taken into account for the analysis of the novelty of the claim.

4.2.2. Equivalent disclosures

It is not possible to reason equivalently in the context of the appreciation of novelty (Paris District Court, 3rd c., October 5, 1999 or INPI Examination Guidelines, IC-VII 4.2): this relates to the inventive step (Court of Appeal of Paris, 4th ch., Sect. B, May 20, 2005).

Chapter 5. Using Disclosures to Attack Novelty

Section 5.1. Principle: no combination

It is not possible to combine several documents (C. Cass. com., March 12, 1996, No. 94-15283).

In order to undermine the novelty of the patent, the prior art must disclose the constituent elements of the invention (Court of Appeal of Paris, Pole 5, 2nd chapter, April 11, 2014 or C. Cass. com., March 12, 1996, No. 94-15283) of "any room":

  • in the same form,
  • in the same arrangement,
  • with the same function in view of the same technical result.

We speak of anteriority "Total" or "unique and complete” .

If a characteristic is reproduced but used for a different purpose, the French judges then consider that there is no infringement of novelty (INPI Examination Guidelines, IC-VII 4.2, Paris District Court, 3rd Division, 3rd Sect., May 2, 2014).

This approach seems to me questionable, because the function of the features is not necessarily described in the documents of the prior art and this gives an undue advantage to the patentee.

Section 5.2. exceptions

French case law seems to consider that in the case of juxtaposition of characteristics (ie characteristics which do not provide any result other than the sum of the results specific to each characteristic), each characteristic can be anticipated separately (District Court of Strasbourg, 1st ch. civ., January 31, 2005).

Chapter 6. Assessment of novelty according to the wording of the claims to be attacked

Section 6.1. Invention and range of values

6.1.1. Introduction

An invention of selection is to select from a known set or a known range:

  • individual elements,
  • subsets,
  • sub-ranges of limited values that have not been explicitly mentioned.

6.1.2. Selection in an individualized list

A selection is new if several products are disclosed in a prior art and it is necessary to select the right combination to arrive at the object of the invention (Paris District Court, 3rd Chamber, 3rd Sect., March 25, 2009).

6.1.3. Selection of a sub-range in a disclosed range

French case law seems more demanding than the EPO on the subject.

Indeed, to destroy the novelty, it seems necessary that the even range is disclosed: a selection of a sub-range thus seems to be new (Court of Appeal of Paris, 4th ch., Sect. B, October 31, 2003).

Whether the sub-range is arbitrary or not seems to be inventive activity in France (Court of Appeal of Paris, 4th ch., Sect. B, October 31, 2003).

It should be noted that there are contrary decisions (Paris District Court, 3rd Division, 2nd Sect., 24 November 2006).

Selecting a sub-range in an interval
Selecting a sub-range in an interval Selecting a sub-range in an interval

6.1.4. Selecting a range containing a value disclosed

If the claimed range includes a value disclosed by the prior art, this range will not be new (Paris District Court, 3rd Division, 3rd Sect., May 23, 2007in this case the claim in question is dismissed for lack of inventive step, but for another difference, or Paris District Court, 3rd Division, 2nd Sect., 24 November 2006).

It therefore seems necessary to exclude it explicitly.

6.1.5. Selection of a sub-range intersecting a disclosed range

By analogy with the preceding paragraphs, a sub-range intersecting a disclosed range may be new if the boundaries of the disclosed range are excluded from the claim.

Selecting a sub-range intersecting an interval
Selecting a sub-range intersecting an interval Selecting a sub-range intersecting an interval

Moreover, if no explanation is given as to the range, the judge will tend to cancel the claim for lack of novelty (which is surprising compared to the usual position of the French judge, Paris District Court, 3rd Division, 2nd Sect., 24 November 2006).

Section 6.2. Category of claim

6.2.1. Therapeutic applications

1) First therapeutic application

The first therapeutic application is provided in the article L611-11 CPI, paragraph 4.

This article provides that it is possible to claim a non-novel product for use as a medicine: the claim will then be new (if of course the use of this product as a medicine was not known) (Paris District Court, 3rd Division, 1st Sect., 12 February 2008).

The claim will then be formulated as follows (INPI Examination Guidelines, IC-VII 4.2.f):

Product X for use as a medicine, in which ...

If ever the claim is formulated in "Swiss" form (ie Use of the product X in the manufacture of a medicament), this does not seem to be a real problem (Court of Appeal of Paris, ch. 04, September 15, 2000).

2) Second therapeutic application

The second therapeutic application is provided in the article L611-11 CPIparagraph 5.

The claim will then be formulated as follows (INPI Examination Guidelines, IC-VII 4.2.f):

Product X for use in the treatment of disease Y, in which ...

The claim will then be new (if of course the use of this product to cure this disease was not known) even if the product is known as such.

6.2.2. Process

There is not much to say here: all the characteristics of the process must be reproduced.

The use of a known process in a new technical field confers novelty to the process with regard to the position of French judges (a kind of "second non-therapeutic application” , Paris District Court, 3rd Division, 1st Sect., February 19, 2008).

If the product resulting from the process is new, this confers novelty to the process itself (INPI Examination Guidelines, IC-VII 4.2.g):

  • to the process that allows to obtain it and
  • to the use of the product.

6.2.3. Method for + destination

The destination of the process should be seen as a limitation (Lyon Court of Appeal, November 14, 2002): the same process, but used for another purpose / in another use will not impede such a claim (Court of Appeal of Paris, Pole 5, 2nd chapter, April 11, 2014 or C. Cass. com., March 12, 1996, No. 94-15283).

6.2.4. Process for manufacturing a new and inventive product

If the product is new, it confers novelty (INPI Examination Guidelines, IC-VII 4.2.g) to the manufacturing process of this product.

6.2.5. Product

There is not much to say here: all product features must be reproduced.

6.2.6. Product defined by a process ("product by process")

The formulation "Product obtained by process Y" only covers the product actually obtained by this process (Court of Appeal of Paris, 4th ch. sect. B, March 28, 2008).

Therefore an identical product, but produced by another process will not anticipate the claim (unlike what happens in Europe).

6.2.7. Product for + destination

In French law, because of the requirement of total prior art, the destination of the product must be regarded as a limitation (Lyon Court of Appeal, November 14, 2002): the same product but used for another purpose / in another use will not impede such a claim (Court of Appeal of Paris, Pole 5, 2nd chapter, April 11, 2014 or C. Cass. com., March 12, 1996, No. 94-15283).

6.2.8. use

A new use will of course be new (Lyon Court of Appeal, November 14, 2002).

The use of a known product / process in a new technical field confers newness to the use with regard to the position of French judges (a kind of "second non-therapeutic application” , Paris District Court, 3rd Division, 1st Sect., February 19, 2008).

6.2.9. Using a new and inventive product

If the product is new, it confers novelty (INPI Examination Guidelines, IC-VII 4.2.g) to the use thereof.

6.2.10. Use of a process for + destination

This type of claim is equivalent to a claim relating to this process.

Section 6.3. Examples

Expressions such as "preferably", "for example", "such as", etc. are not limiting and are ignored (INPI Examination Guidelines, IC-IV 3.2.b or Paris District Court, 3rd c., 2nd sect. July 11, 2014).

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