About IP

For a patent to be granted, an invention must be both novel and inventive.

Novelty

The test for novelty differs from one patent jurisdiction to another. However, in most cases, for an invention to be considered novel, there must have been no disclosure of it anywhere in the world prior to the filing of the patent application. Any non-confidential act that discloses all of the features of the invention, before the patent application has been filed – made even to a single person, through documents, demonstration or through the sale of a sample of the product – could destroy the novelty of the invention, making it unpatentable.

A few exceptions to the ‘novelty destroyed by disclosure’ rule include:

• Where a grace period applies (such as in Australia) and a complete patent application is lodged within 12 months of the disclosure.

• Where the disclosure arises from a trial or an experiment and the nature of the invention makes it necessary that this be done in public.

• Where the disclosure takes place before a patent application is filed, but is protected by relevant exceptions (such as when it is displayed at a “recognised exhibition” or by a “learned society”). Provided a complete patent application is filed within 12 months of such a disclosure, the invention may still be considered novel.

It is not only your own disclosures against which the novelty of the invention is tested. The invention must also be novel when compared with any published document or use, or other public disclosure anywhere in the world. This is regardless of whether the disclosure relates to a real or successful product. Any disclosure made in a document (whether the document has been read by anyone or not) that is publicly available before the priority date can be used to show that the invention is not novel.

Inventive Step

To obtain a standard patent, an invention also needs to be inventive or “not obvious” to another person with similar skills in the same technology. (A lesser standard is applicable for innovation patents).

Inventive step is difficult to determine and is the area of patent law that usually takes up most of the Court’s time if ever there is patent litigation.

One way to consider this issue is to ask the following question: “Would a non-inventive person, who is experienced and knowledgeable in the area of technology to which the invention relates, when faced with the same problem that the invention has solved, have taken as a matter of routine whatever steps there were that led to the invention?”

When answering this question little weight should be placed on simplicity and on hindsight.

Australian patent law tells us that even a “scintilla of invention” is enough for there to be an inventive step, and also that the glare of hindsight is not to be used when considering whether an inventive step is an obvious step.

If uncertain as to whether the invention is patentable, seek professional advice. Do not be deterred from filing a patent application just because there is some doubt about whether there is an inventive step.