Novelty

Jane Lambert















21 Oct 2025

One of the conditions for the grant of a patent is that the invention is new (s.1 (1) (a) of the Patents Act 1977). S.2 (1) provides that an invention shall be taken to be new if it does not form part of the state of the art. S.2 (2) defines the state of the art as “all matter (whether a product, a process, information about either, or anything else) which has at any time before the priority date of that invention been made available to the public (whether in the United Kingdom or elsewhere) by written or oral description, by use or in any other way.” If an invention is not new, it is said to be anticipated.

Requirements for Anticipation

In Synthon BV v. Smithkline Beecham plc [2005] UKHL 59, [2006] RPC 10, [2006] 1 All ER 685, Lord Hoffmann said at para [19] that there are two requirements for anticipation: prior disclosure and enablement.

Prior Disclosure

Disclosure had been explained by Lord Westbury LC in Hill v Evans (1862) 31 LJ(NS) 457, 463 and Lord Justice Sachs in General Tire and Rubber Co v Firestone Tyre and Rubber Co Ltd [1972] RPC 457, 485-486.

Lord Westbury said:
"I apprehend the principle is correctly thus expressed: the antecedent statement must be such that a person of ordinary knowledge of the subject would at once perceive, understand and be able practically to apply the discovery without the necessity of making further experiments and gaining further information before the invention can be made useful. If something remains to be ascertained which is necessary for the useful application of the discovery, that affords sufficient room for another valid patent."
Lord Justice Sachs added:
"To determine whether a patentee's claim has been anticipated by an earlier publication it is necessary to compare the earlier publication with the patentee's claim…If the earlier publication…discloses the same device as the device which the patentee by his claim…asserts that he has invented, the patentee's claim has been anticipated, but not otherwise. …

When the prior inventor's publication and the patentee's claim have respectively been construed by the court in the light of all properly admissible evidence as to technical matters, the meaning of words and expressions used in the art and so forth, the question whether the patentee's claim is new…falls to be decided as a question of fact. If the prior inventor's publication contains a clear description of, or clear instructions to do or make, something that would infringe the patentee's claim if carried out after the grant of the patentee's patent, the patentee's claim will have been shown to lack the necessary novelty…The prior inventor, however, and the patentee may have approached the same device from different starting points and may for this reason, or it may be for other reasons, have so described their devices that it cannot be immediately discerned from a reading of the language which they have respectively used that they have discovered in truth the same device; but if carrying out the directions contained in the prior inventor's publication will inevitably result in something being made or done which, if the patentee's claim were valid, would constitute an infringement of the patentee's claim, this circumstance demonstrates that the patentee's claim has in fact been anticipated.

If, on the other hand, the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee's claim, but would be at least as likely to be carried out in a way which would not do so, the patentee's claim will not have been anticipated, although it may fail on the ground of obviousness. To anticipate the patentee's claim the prior publication must contain clear and unmistakable directions to do what the patentee claims to have invented…A signpost, however clear, upon the road to the patentee's invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee."
Lord Hoffmann summarized those statements as follows: “the matter relied upon as prior art must disclose subject-matter which, if performed, would necessarily result in an infringement of the patent.”

Enablement

His lordship said that enablement meant that the ordinary skilled person would have been able to perform the invention which satisfies the requirement of disclosure.” He quoted from Mr Justice Laddie’s judgment in University of Southampton's Applications [2005] RPC 220, 236:
"In my view, devising an invention and providing enabling disclosure are two quite different things. Although both may be necessary to secure valid protection, as section 14 of the Act shows, they relate to different aspects of the law of patents. It is very possible to make a good invention but to lose one's patent for failure to make an enabling disclosure. The requirement to include an enabling disclosure is concerned with teaching the public how the invention works, not with devising the invention in the first place".
Distinction between Anticipation and Obviousness

Shortly after the House of Lords’ decision in Synthon, Mr Justice Pumfrey considered the distinction between anticipation and obviousness in para [111] of his judgment in Research In Motion UK Ltd. v Inpro Licensing SARL [2006] EWHC 70 (Pat) (2 Feb 2006),
“A claim lacks novelty if it covers something that formed part of the state of the art at the priority date. A claim is obvious if it covers something obvious in the light of any matter forming part of the state of art at that date.”
Further Information

Cases applying those principles are listed below and these will be updated from time to time. Call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact page for more information.

No comments:

Post a Comment

Subscribe to: Comments (Atom)