The word ‘novelty’ is used in everyday speech in various contexts, therefore it can be understood in many different ways, depending on the circumstances. In industrial property law, the word ‘novelty’ is of key significance in the course of seeking protection for innovative solutions.
Features of an invention, utility models, industrial designs, and, to a certain extent, topographies of integrated circuits must be novel in order to enjoy protection under intellectual and industrial property law.
State of the art
The concept of novelty in industrial property law is inseparable from the concept of the state of the art (also known as prior art). Contrary to the word ‘new,’ which is frequently used in everyday speech, the phrase ‘state of the art’ seems slightly puzzling. In English, the phrase ‘state of the art’ is also used as an adjective meaning ‘the most modern’. This use of the phrase is very accurate as the invention to which the application pertains should be ‘state-of-the-art’.
Disclosure of novelty
‘State of the art’ means simply the current knowledge about technical solutions. This knowledge encompasses all commonly available facts about existing technologies and structures. Naturally, all previously published patent applications are also part of state of the art, even if they have not obtained protection.
Because of its importance, novelty must be properly protected as it is susceptible to disclosure as a result of production and sale of products based on the invention, publication of a description of the solution in any publishing form or on the Internet, publication in the mass media, or placing the documentation in a library accessible to anyone interested, in particular in a database available to a wider group of people.
Another example of disclosure of information pertaining to the invention is revealing it to a prospective customer or investor, e.g. by presenting the details of the prototype’s operation without concluding an appropriate confidentiality agreement.
Even advertising can harm new products if it reveals the features of the invention in a way that allows it to be reproduced, not to mention auctioning the prototype online.
Novelty disclosure happens particularly often while presenting the solution at a scientific conference. Even merely presenting the solution in a paper or a lecture can have serious consequences for the assessment of novelty.
Any public disclosure will destroy the novelty of the invention. However, it should be emphasized that it does not matter whether someone has used this knowledge or not. Moreover, it doesn’t matter if anyone understood the information they came into possession of. Obviously, it is important whether the disclosure is sufficient to reproduce the invention, therefore what matters is what information has been disclosed and not to whom. It is enough, however, when the information regarding the solution is available to a wider range of people than its creators or the person authorized to file the application .
In the event of an evident abuse of the applicant’s rights, such as at the hands of a dishonest business partner, the invention may be submitted within six months of the date of the disclosure resulting from that abuse. Unfortunately, this time may not be long enough if the applicant is not aware that a disclosure has taken place.
A special case is the disclosure of the solution while displaying it at an official or officially recognized international exhibition. The key word here is ‘official’, as it only pertains to exhibitions that have a certain status, which must always be checked before exhibiting the solution. The time for submitting the solution presented at such an exhibition is six months from the date of such presentation.
If an application is not being filed for the first time, for example when one has obtained the right to an invention registered abroad and would like to register it in Poland, the time for submission is 12 months from the date of the first submission of the invention in a different international patent office. Otherwise, the same invention known abroad will harm the application for its protection in Poland. Together with the so-called exhibition priority right, this is known as the law of earlier priority.
The purpose of novelty
The concept of novelty as used in industrial property law serves the purpose of deciding which solutions deserve protection and which do not. It prevents a situation when protection is granted to two identical solutions. It is also an argument for anyone who decides that an existing invention does not deserve protection. Questioning novelty is the easiest way to prove that a solution should not be protected. This makes it a particularly important concept that should be given enough attention when deciding on how to protect one’s own solution.