The European Patent Convention defines novelty simply as that which does not form part of the state of the art. [36]

The state of the art is defined an including everything made available to the public by means of a written or oral description, by use or in any other way, before the date of filing of the European patent application or a validly claimed convention priority date. [37]

4.1 "Made available to the public"

There is still relatively little case law on the question of what is meant by "made available to the public", although the burden lies on the party asserting that this has occurred to show "when", "what" and in what particular circumstances, in particular to whom, the alleged making available occurred. [38]

The most important decision on this topic is an Enlarged Board of Appeals decision in case G01/92, a case brought before the Board by the President of the EPO acting under the powers granted to him under Article 112(1)(b). The Board was asked to resolve a difference between two ordinary appeal boards on the same point of law. [39]

In this case, the Board held that making a product available to the public made its composition or construction available to the public, so long as one skilled in the art could directly and unambiguously determine that composition by analysis and reproduce it whether or not particular reasons can be identified for carrying out the analysis.

In the case of Prior use/Packard [40] the question to be decided was formulated in two parts: 1) whether the means of disclosure was available to the public and, if so, (2) whether the information in question was accessible and derivable from such means. The Board went on to state that:

it is the fact that direct and unambiguous access to information concerning the composition or internal structure of a prior used product is possible, for example by means of analysis which makes such composition or structure "available" to the public.

However, to meet this test a full analysis of the prior used composition may not be necessary. All that is required is an analysis that is sufficiently detailed to show that the prior used material must have fallen within the claims in question. The fact that detailed analysis of the components of the prior used composition was not possible or was very difficult was not relevant to determining a question of novelty if this could be determined with less detailed analysis.

On the question of when something became available to the public, the case law holds that this is the date on which it became possible for a member of the public to view the publication or other disclosure not the date on which it was in fact first seen by a member of the public. [41] On the other hand, the EPO still imposes a fairly strict burden of proof that a publication was actually available to the public by the priority or filing date. A mere likelihood does not suffice. [42] The position on oral disclosures is similar. In the event that the proceedings of a meeting, at which was read the paper constituting the alleged oral disclosure, are subsequently published, the Guidelines state that "the Examiner should start with the assumption that the document gives a true account of the earlier lecture, display or other event ... If, however, the applicant gives sound reasons for contesting the truth of the account given in the document" then the allegation should be dropped. [43]

In Hooper Trading/T-Cell growth factor [44] it was held that to establish prior oral disclosure where there was no subsequent written publication, the following had to be established:

1. the date of the alleged prior oral disclosure

2. exactly what was said

3. the circumstances surrounding the alleged oral disclosure.

Disclosures made in confidence are not destructive of novelty of a subsequently filed patent application. In Macor Marine Systems/Secrecy Agreement[45] it was held that an express and specific confidentiality agreement was not necessarily a prerequisite for a confidential relationship. In the case in question, drawings had been supplied that were marked with indicia that they were supplied subject to German law on unfair competition, and that damages would be payable in respect of their unauthorized use. The Board found that such indicia were sufficient to create a condition of confidence such that their disclosure to a potential customer did not destroy the novelty of the invention shown. The Board noted that in appropriate cases, an obligation to secrecy could arise from good faith or trust, even if not made orally.

4.2 Prior copending applications

As regards prior unpublished copending applications, although their entire content is relevant to the question of determining novelty of a later filed application designating the same countries, they are not to be used as the basis of an allegation of lack of inventive height.[46] However, since the change in practice having regard to payment of designation fees came into effect on July 1, 1997, a prior application is only deemed to have designated a particular country if the designation fee for that country has been paid. [47] It should be noted that the prior copending applications referred to include only prior European applications, or prior International applications filed under the Patent Cooperation Treaty that designate the EPO, [48] Prior copending national applications, do not form part of the state of the art for the purposes of the European Patent Convention even if these are filed in a country designated in the European application, although such applications may have an effect under national law once a patent has been granted. [49]

4.3 Excepted publications

It is further provided that prior disclosure as a result of an evident abuse of the applicant's rights or at certain international exhibitions does not constitute a novelty bar as long as an application was filed within a six-month grace period following one of these events. [50] There have been few cases on the question of what is an evident abuse of the applicant's rights, but it seems that this is likely to be difficult to establish an exception on this basis. For example, erroneous publication of a patent application by the Brazilian Patent Office has been held not to be an abuse of the applicants rights because there was no "abusive" state of mind on the part of the publishers. [51]