 Understand what Novelty is  Know what is called “absolute novelty” and “relative novelty”, and for which types of patents theses notions apply  Know some challenges existing in treating novelty as a patentability criterion for an invention National and International Systems: Novelty

Deciding on Novelty of an Invention Novelty over Prior Art Absolute Novelty Relative Novelty Local Novelty Novelty in Various Countries Issues Surrounding Novelty National and International Patent Systems: Novelty

Patentability Novelty Absolute novelty (strict novelty) Local novelty Relative novelty Prior art search Grace period National and International Systems: Novelty

(i) What is the invention? (ii) What information is disclosed in the prior art? In light of (i) and (ii), is the invention novel, i.e., is it part of the state of the art? National and International Systems: Novelty

Readily accessible and available to the public Prior art No novelty Patentable Novelty over Prior Art Public domain National and International Systems: Novelty

Prior art Includes any data of the public domain known in the world prior the priority date. Also includes any applications with earlier priority, which are made available to any person National and International Systems: Novelty

 All material made available to the public anywhere in the world forms part of the art (Russia, UK, Europe) Absolute novelty

 Any public use or publication of the invention before the priority date will not destroy novelty unless the use occurs in the country or the publication is available in the country (New Zealand) Local novelty

 A publication available in any country will destroy novelty but use of the invention outside the country in which protection is sought does not (Australia before 2000, USA before March 16, 2011) Relative novelty

an organized review of prior art contained in public documents :  - patentability searches conducted by an inventor before filing a patent application;  patent examination searches conducted by a government examiner in order to determine whether to grant or reject a patent application;  invalidity searches in litigation conducted by the accused infringer; and  - state of-the-art searches for information in a technical field. Prior art search

Chart: Novelty in various countries Country Public Use Publicly Known Published /Patented Abandonme nt Restrictions First-to- Invent/First -to-File Grace Periods RussiaAnywhere NoFirst-to-File Conditional 6- Month Grace Period United States Anywhere (now) Only in Country (before March 16, 2013) Anywhere (now) Only in Country (before March 16, 2013) AnywhereYes First- Inventor- to- file Broad 1- Year Grace Period Majority of European Countries Anywhere NoFirst-to-FileVaries

Chart: Novelty in various countries cont. JapanAnywhere No First-to- File Limited Conditional 6- Month Grace Period China Only in Country Only in Country AnywhereNo First-to- File Limited Conditional 6- Month Grace Period Republic of Korea Only in Country AnywhereNo First-to- File Limited Conditional6- Month Grace Period AustraliaAnywhere NoFirst-to- File Conditional 6/12-Month Grace Period

Issues surrounding Novelty (RF) The prior art includes: Provided that they have an earlier priority, all the applications filed in the Russian Federation by other persons for inventions and utility models, the materials of which any person may familiarize himself or herself with.

Issues surrounding Novelty (RF) An invention shall be recognized as anticipated by the prior art and not meeting the requirement of novelty, if the prior art inherently discloses a means with features identical to all the features contained in the claims of an application, including the characterization of the purpose of an invention.

Issues surrounding Novelty (RF) When establishing the novelty of an invention, the prior art also includes inventions and utility models patented in the Russian Federation, provided that they have an earlier priority. Since this rule addresses the prohibition of double patenting, prior patents owned by the same applicant of an application under examination also become part of the prior art and only the information contained in the claims of the corresponding patent is taken into account.

 Novelty is one of the criteria of patentability, deciding on which takes certain steps  There are three types of novelty: absolute novelty, local novelty and relative novelty  Novelty is always determined over the prior art National and International Patent Systems: Patentability Criteria

1.Pravo intellectualnoi sobstvennosti (Intellectual Property Law) Text-book edited by Dr.-Prof. I. A. Bliznets, Prospect, 2010 (in Russian) 2.Lionel Bently and Brad Sherman Intellectual Property Law, 3d edition, Oxford University Press, 2009, pp Civil Code of the Russian Federation, Part IV 4. Brown & Michaels “What’s mean…” – Our Patent Glossarywww.bpmlegal.com/patgloss.html#a National and International Systems: Novelty

5.RF Administrative Regulations for the Acceptance, Examination, Granting and Registration of Patent Application for Invention, issued on June 5, Enlarged concept of novelty: Initial study concerning novelty and the prior art effect of certain applications under draft article 8(2) of the SPLT prepared by the International Bureau, WIPO. Available at National and International Systems: Novelty

Acknowledgement note: Special gratitude to Kristina Lyu, a Lead IP expert, Ural Branch of the Russian Academy of Sciences, for working on the design of the lecture presentations and for being the first attentive listener of the contents National and International Systems: Novelty