There are four basic criteria for patentability: novelty, inventiveness, utility, and statutory – the subject matter must be patent eligible. The present blog will briefly address the novelty criteria. Subsequent blogs will address the criteria of inventiveness, utility, and statutory subject matter.
The definition of “invention” in Section 2 of the Patent Act uses the word “new”: “Invention means any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter. The test for novelty in Canada, and many other countries, is whether the invention has previously been made available to the public in a single piece of “prior art” in a manner sufficient to enable a skilled person in the art to practice the invention. The prior disclosure must be self-contained, a combination of prior art documents is not permitted for barring an invention from being patented under the “novelty” criterion. Prior disclosures include printed publications of any sort and oral disclosures, in any language, before the filing date of a first patent application directed to the invention. A prior disclosure may also include the invention being put on display. Disclosures in a private document, such as an internal memo that is not available to the public, do not count.
A thesis usually comprises both an oral defense and a written manuscript. If the oral thesis defense is made public, then the thesis could be considered a public disclosure as of the date of the defense. If the oral thesis defense is not made public and the thesis is shelved in a library, then the thesis would become a public disclosure when it is cataloged, such that a member of the public could locate it.
Regarding peer-reviewed articles and online publications, it is important to note that the online posting of an article by the journal also constitutes a public disclosure. It is recommended that inventors ask the journal when the article will be posted online, as that date is often one or more weeks in advance of the printed publication date.
Social media postings such as on Facebook, Twitter, and LinkedIn can also be considered a public disclosure if the postings are sufficient to enable a skilled person in the art to practice the invention. Discussions covered by a confidential disclosure agreement are generally not considered public disclosures for patent purposes.
Finally, certain countries, including Canada and the United States, have limited “grace periods” within which a public disclosure made by the inventor(s) before the filing of a patent application will not be considered as prior art against the patent application. Canada has a one-year grace period from the date of an inventor’s enabling disclosure within which a patent application must be filed. However, most countries require absolute worldwide novelty and do not provide the inventor with any grace period.