Absolute Novelty is not always absolute

Editor's Note: A. Jose Cortina is a member of the Intellectual Property Practice Group of Ward and Smith, P.A.

There is a common belief, even among many United States patent attorneys, that if there has been a disclosure of an invention anywhere in the world, whether by publication or use, before the filing date of a United States patent application or the priority date of a patent application filed anywhere else in the world, then the filing of patent applications in most countries throughout the world is barred. The requirement that an invention not have been disclosed prior to the filing of a patent application is known as the "absolute novelty" requirement. In many cases, when an inventor becomes aware of such disclosure, the inventor incorrectly assumes that the invention no longer meets the absolute novelty requirement for other countries and decides that pursuing patent protection outside the United States will be a futile effort.

The Pitfall

While it is true that many countries will not grant a patent based on an application for an invention that fails to meet the "absolute novelty" requirement, the commonly held belief that this is true in all countries is a myth that can be both dangerous and erroneous. There are a number of major countries which recognize exceptions allowing patent protection to be obtained notwithstanding a prior disclosure of the invention. Thus, although many countries appear to require "absolute novelty" in order to patent an invention, an inventor who accepts the myth that this is universally true can lose foreign patent rights unnecessarily.

The Escape Hatch

The exceptions to "absolute novelty" arise out of distinctions made by some countries between an inventor's actions and the actions of others, or between actual use or publication of the invention and other types of disclosure. A current complicating factor in determining if disclosure has occurred is the pervasive access to information on the Internet. This pervasive access can work to an inventor's benefit as well as detriment because publication of an invention on the Internet may be fleeting and non-retrievable. Thus, anyone challenging the inventor's patent based on a prior publication on the Internet will have to surmount the daunting challenge of proving that the publication in fact occurred.

Importantly, the European Patent Convention ("Convention") contains exceptions to the general rule requiring absolute novelty. More specifically, the Convention permits a patent to be issued despite prior disclosure if the disclosure (1) occurred no earlier than six months before the filing of the European patent application, and (2) was due to an evident abuse of a relationship with the patent applicant. For example, a disclosure made by another party who breached an existing obligation of confidentiality to the patent applicant would be considered an abuse of the relationship, thus allowing the later filing of the patent application by the inventor whose trust was betrayed.

The Bad Results

Failure of the inventor to take advantage of such exceptions to the "absolute novelty" requirement may result in a double whammy. Not only is there no protection when it would have been possible to obtain a patent, but the inventor also may lose the right to recover damages for the wrongful disclosure. For example, if a wrongful disclosure is made by another party in breach of that party's obligation of confidentiality to the inventor, the inventor ordinarily would have a claim for damages for loss of patent rights in countries in which the inventor was deprived of the right to patent protection. If, however, such countries are among those which provide exceptions to the "absolute novelty" requirement (such as the Convention's six-month grace period during which an application may be filed in the event of wrongful disclosure), if the inventor takes no action to mitigate the inventor's damage by filing for a patent during the permitted period, the inventor may well lose the right to recover damages from the party who wrongfully disclosed the invention because it will be the inventor's failure to file the patent that is the proximate cause of the damage, not the wrongful disclosure.

What to do?

While it is appropriate to take a conservative approach to worldwide protection and attempt to ensure that all applications are filed before there is any type of disclosure of the invention, a country-by-country analysis should be undertaken in cases where a disclosure has occurred to determine if the disclosure actually constitutes a bar to the grant of a patent. In many countries, one form of disclosure may constitute an act that destroys absolute novelty, while another form of disclosure may not. No assumption should be made that absolute novelty has been destroyed because exceptions may exist in the countries of interest that nevertheless would permit filing.


© 2008, Ward and Smith, P.A.

Ward and Smith, P.A. provides a multi-specialty approach to the representation of technology companies and their officers, directors, employees, and investors. A. Jose Cortina practices in the Intellectual Property Practice Group, where he concentrates his practice on patents, trademarks, copyrights, and related matters. Comments or questions may be sent to ajc@wardandsmith.com.

This article is not intended to give, and should not be relied upon for, legal advice in any particular circumstance or fact situation. No action should be taken in reliance upon the information contained in this article without obtaining the advice of an attorney.