Generally speaking, all countries require that the subject matter claimed in a patent application must not be already known or part of the prior art.  The prior art may take the form of several different types of activities, such as disclosures in printed publications, sales or commercial practice, and granted patents, either by the inventor or third parties.  Disclosures made in confidence to other parties usually will not constitute prior art.  Different countries, however, take somewhat different approaches to defining exactly what is or is not prior art.  Many countries adhere to an “absolute novelty” standard, while others (including the United States) provide some type of grace period. 

 

In absolute novelty countries, a patent application must have an effective filing date that precedes any activity that would create “prior art” or else the invention claimed in that application will fail the novelty requirement, regardless of whom is responsible for that activity.  For example, if the inventor himself or herself publicly discloses or sells the invention prior to filing for a patent, such disclosure or sale may bar the patent from being granted or render it invalid for lack of novelty.  For this reason, if obtaining patent protection outside the U.S. is of interest, it is often necessary to file a priority application before any public disclosure or commercial use of an invention.

 

The United States provides a relatively broad one year grace period within which an inventor may file an application and still obtain a valid patent.  (Novelty) For example, if an inventor discloses the invention in a published journal article, he or she has up to one year from the publication date of that article to submit an application.  Other countries which are generally regarded as “absolute novelty” countries may nonetheless recognize much more limited grace periods.  Also, other countries may take a different approach than the U.S. with respect to defining when an invention has been “sold” or been put into public use or whether or when a document is legally considered a “publication.”  Due to the current lack of harmonization, if patent protection in a certain country is of particular interest it is important to consult a knowledgeable patent practitioner for advice at an early point in the development of an invention, since otherwise there will be some risk of forfeiting valid patent rights.

 

The major Western European countries (Germany, the United Kingdom, France, Italy, Spain) are generally considered absolute novelty countries.  For example, under the European Patent Convention the prior art is considered to include everything made available to the public by means of a written or oral description, by use, or in any other way anywhere in the world before an application’s earliest effective filing date.  However, if the invention is a process, the disclosure or sale of a product made from that process may not destroy novelty, if such disclosure or sale does not put the public in possession of the claimed process itself.  Also, an exception to the absolute novelty requirement is made in the situation where the disclosure of the invention took place without authorization of the applicant (for example, where such disclosure breached a confidentiality agreement), provided an application is filed within six months of such disclosure.  A six month grace period is provided following the display of the invention at certain international exhibitions.

 

In Japan, which is also an “absolute novelty” country, the claimed invention must not have been publicly known or publicly used in Japan or in any foreign country, not described in any publication distributed in Japan or any foreign country, and not made available to the public through electronic communication means in Japan or any foreign country prior to filing a patent application.  However, the following acts do not destroy novelty, provided that a patent application is filed within six months of such act: a) conducting experments related to the invention, b) the introduction of the invention by the inventor in a printed publication, through electronic communication means, or in a written presentation to a scientific organization designated by the Patent Office, c) disclosure of the invention against the inventor’s will, or d) display of the invention at certain types of exhibitions.