"[...]WIPO has recently published, as part of its discussions on patent law harmonisation, a paper proposing an enlarged novelty arrangement, which would help to alleviate US concerns that the present European novelty requirements lead to double patenting, and be part of a package of measures under which the USA would move to the first-to-file regime.
"[...] 1. The present initial study is submitted upon request of the Standing Committee on the Law of Patents (SCP) at its tenth session, held in Geneva from May 10 to 14, 2004, in order to provide a basis for discussion concerning a possible new novelty concept applicable to the prior art effect of unpublished earlier applications under Article 8(2) of the draft Substantive Patent Law Treaty (SPLT). The study aims at providing broad background information and at facilitating further substantive discussion in the SCP, and thus addresses not only national and regional laws and practices regarding the prior art effect of earlier applications, but also the policy objectives underlying these different practices.
2. The divergences among national laws and practices in respect of the prior art effect of unpublished earlier applications seem to reflect different principles and objectives underlying the prevention of double patenting. Examining a number of national and regional laws and practices, it appears that those different practices correspond mainly to one or more of the following three models:
(i) Strict novelty: if a claimed invention is explicitly or inherently disclosed in an earlier application, the earlier application defeats the patentability of the claimed invention;
(ii) Broader novelty: even if the claimed invention is not fully disclosed (explicitly or inherently) in the earlier application, the earlier application defeats the patentability of the claimed invention if the differences between the two are minor (for example, a replacement with a well-known equivalent element);
(iii) Novelty and inventive step (non-obviousness): the earlier application defeats the patentability of the claimed invention if the latter lacks either novelty or inventive step (non-obviousness) compared to the earlier application.
The present initial study describes the characteristics of the different models in detail and further outlines possible legal and practical consequences of applying those models.
3. Further, since each model inherently provides certain advantages and disadvantages, many national and regional laws provide additional mechanisms in order to meet the underlying policy objectives, for example, provisions that avoid self-collision (earlier unpublished applications do not constitute prior art in respect of applications filed later by the same inventor or applicant) or a mechanism to subject the patent term of the later patent to that of the earlier patent (terminal disclaimer). The study examines the effects and the applicability of those mechanisms when combined with the different models. Since the adjustment of the term of protection per se is neither a matter of prior art nor of novelty, it is suggested that this matter does not need to be discussed in conjunction with the determination of the prior art effect of earlier applications.
4. In accordance with the request of the SCP, the initial study also considers the implications of extending a broader novelty concept to the issue of novelty in general. It seems that applying a broader novelty standard to publicly available prior art or imposing a strict novelty standard to such prior art does not lead to significant practical problems. In the former case, certain claimed inventions may be refused on the ground of lack of novelty, and in the latter case, they may be refused on the ground of lack of inventive step. Further, although a strict novelty standard can be applied to other cases involving a determination of the same invention, such as the validity of a priority right, divisional applications or amendments, the objectives underlying the novelty requirement and these other cases are different. A broader novelty standard may not easily be applied to, or appropriate for, those other cases in respect of which the preservation of the original contents of the application is decisive.
5. The initial study reveals that the different approaches in respect of the prior art effect of earlier applications reflect different patent cultures and societal objectives as well as different ways of balancing the interests of the parties involved under each legal framework. Therefore, each of the various systems constitutes a delicate balance of social, economic and legal factors. The main objective of harmonizing the prior art effect of earlier applications is to achieve a uniform prior art basis at the international level, thus contributing to more legal certainty and facilitating mutual work sharing among Patent Offices. In order to achieve this goal, a common standard on this issue at the international level would at least need to aim at achieving simplicity, clarity, legal certainty and predictability. [...]"
At present, Article 54 (3) EPC in conjunction with Article 56 EPC provides a "Strict novelty" approach for the European Patent Office (EPO).
CIPA website: