3.5.1 Novelty

Novelty means that the invention has not been disclosed. All information that is publicly accessible to the person skilled in the art can be used to determine this. It is an objective criterion, whereby the person skilled in the art is supposed to know all state of the art.

For the assessment of novelty (and inventive step) all information before the filing date of the application is taken into consideration. This is the date of the first filing: ‘first to file’.

Until recently, the United States had a different system: ‘first to invent’. The moment when the inventor conceived the invention was the moment for the assessment of the requirements. Although fundamentally correct, this brings with it all sorts of problems of proof when conflicts arise. That is why in 2011 the United States also switched to the ‘first to file’ principle.

Documents with a later publication date than the filing date can not be detrimental to novelty, nor can they take away inventiveness.

So if not all features of the invention are already known, the invention is new:

An invention shall be considered to be new if it does not form part of the state of the art (see also article 54 (1) EPC or article 33(2) PCT).

3.5.2 State of the art

The state of the art is accurately defined in the patent law:

The state of the art shall be held to comprise 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 patent application (see also article 54 (2) EPC or Rule 64 PCT).

This definition stipulates that all information that is publicly accessible in the world is regarded as state of the art. This also includes the documents in a small library in a Chinese mountain village. An important limitation is that the information must be publicly accessible. Documentation, such as technical drawings used in a company, is normally not publicly accessible (due to confidentiality). These documents can therefore not be used to assess novelty.

The filing date is an important date. Anything that has become available public after this date will not affect the patent application. If the same invention is applied for on different dates, the person who applied first has the right to the invention.

Each patent application is published 18 months after the first filing. Thereby it also becomes part of the state of the art.

3.5.3 Inventive step

Inventive step means that it is not obvious for the person skilled in the art to carry out the improvement or modification, for which protection is requested, in the particular solution:

An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art (see also article 56 EPC or article 33(3) PCT).

In the practice of patent examination, this means that all claimed properties are known from a combination of two embodiments, described in one or two documents. The person skilled in the art is thereby also hinted to combine the features of the two embodiments.

or

If the only difference with a known embodiment is an alternative that is obvious to the person skilled in the art, which he knows on the basis of his general knowledge, then the invention is considered to lack an inventive step. For example: To attach something on a wall, a screw is a well-known alternative to a nail.

3.5.4 Clear and sufficiently disclosed

In a patent, the invention must be made public. This must be done in such a way that it can be performed by the person skilled in the art. It is therefore not possible to obtain a patent and keep your invention secret. See also article 83 and 84 EPC and article 5 PCT.

A perpetuum mobile is therefore by definition not patentable.¹

Features that are well known by the person skilled in the art do not need to be described. For example: It is not necessary to describe how something should be fastened, if it is clear to the person skilled in the art that it can be either welded or glued.

The person skilled in the art is defined in patent law as skilled in the field of the invention with broad professional knowledge. The skilled person only knows obvious solutions to problems, but cannot become inventive himself.

3.8.1 Claim in the Nereda patent

The main claim in the patent application of the Nereda technology in WO 2004/ 024638 A1 and continued as in EP 154 2932 A1 reads as follows:

A method for the treatment of waste water comprising an organic nutrient, wherein the waste water is brought into contact with microorganisms-comprising sludge particles, an oxygen-comprising gas is fed to the sludge particles, and the method further comprises the settling of the sludge and the discharge of organic nutrient-depleted waste water characterised in that: - in a first step the waste water is fed to sludge granules; - after the supply of the waste water to be treated an oxygen-comprising gas is introduced in a second step, with the granules being in a fluidised condition; and - in a third step, a settling step, the sludge granules are allowed to settle.

The language used in the claim is a lot more complicated than the language one might normally use to describe the invention. The invention can also be described as:

A method to treat waste water using sludge which is enriched with certain microorganisms to reduce the organic nutrients in the effluent.

One reason for this complicated language in claims is that patents are also legal documents hence the text has a legal character. In order to grant exclusive rights the claims in the patent must be accurately and clearly described in both legal as well as technical terms. In this example the text and used formulations in the claim do not provide any description of the technical features of the invention. We know that the invention is about treating waste water with a certain kind of sludge, but how much sludge, the technical features of the sludge, how much oxygen needs to be supplied to the sludge during the treatment process remains unclear and undefined. This may seem irrelevant but will give serious issues determining the requirements for novelty for this patent application throughout the granting procedure.

Another reason for the use of this kind of language in a patent application is that the patent holder wants the largest possible scope of protection. The patent holder would also like to include a number of embodiments of the invention that differ in features that are not important for the invention. In this example the details of the embodiments are not described in the main claim.

3.8.2 Test for novelty

As mentioned before the claims in a patent application disclosing the invention must be new and not yet earlier described prior to the date of the patent application or else they cannot be granted throughout the procedures. In the search report in the publication of the patent application in EP 154 2932 B1 it can be seen that several documents are cited as state of the art. The search report is used by the examiner to asses the novelty and inventive step of the patent application. In this search report six of these documents are considered to take away the novelty or inventive step of the Nereda technology as claimed in the original patent application.

The following demonstrates how novelty can be assessed. It starts with breaking down the claim into separate features. It is then determined whether these features are collectively known in a prior art document. For this exercise the first document of the search report is used. This document with title Aerobic Granulation in a Sequencing Batch Airlift Reactor (2002) - can be found in Beun, van Loosdrecht, and Heijnen (2002).

First try to find the answer to the question yourself before you will look into the answer.

In the search report the examiner also refers to three other scientific documents describing all remaining claimed features in the total of 10 claims of the patent application. Hence, it is shown that the Nereda invention as claimed in this patent application is known in the prior art. Therefore the original patent application with these 10 claims cannot be granted due to lack of novelty. In the following section describing the patent procedures can be seen that the main claim has been adapted several times by the applicant’s patent attorney. Next to that action, other claims have also been adapted.

3.9.1 EP patent application

The patent application procedure for a European patent (EP) will be discussed first. This procedure is similar to the patent application procedures used in many countries. Figure 7 shows an overview of the EP procedure.

The application starts with the filing of the application at the patent office. The first substantive response to the request is a search report. The most relevant state of the art is mentioned in the search report. The state of the art mentioned in the search report is used in the assessment of the requirements for a patent. This assessment of the requirements takes place during the examination. In addition to the search report, a written opinion is delivered with the search report. Possible objections to the grant of the patent are noted in the written opinion. Not being new or not having an inventive step are the most well-known objections.

The application will be published 18 months after the first filing date. Up to the publication date, the application is secret. From the moment of publication, the invention is known all over the world.

Before the patent is granted, first an assessment is made whether the application meets all the requirements. If not all requirements are met, a communication will be written by the examiner and sent to the applicant. This communication states the objections against the grant and that the application can thus not be granted. The applicant has the possibility of overcoming these objections, for example, by amending the claims. This round of objections and amendments can take place several times. At the end of the procedure an oral hearing may also be held to come to a decision.

If there are no objections, the application will be granted. There is also the possibility that the application will be refused if the objections are not overcome.

After the grant, the patent must be validated at the national patent offices in the desired countries in Europe. The European patent then becomes a bundle of national patents.

3.9.2 NL patent application

The Dutch procedure for a patent is simpler than, for example, the European procedure. The Dutch procedure is shown in figure 8. A similar procedure is also used in other countries, such as Belgium.

The big difference with, for example, the EP procedure is that there is no examination. The patents are granted automatically together with the publication. Also patents that do not meet the requirements are automatically granted. The information from the search report and the accompanying written opinion must then be used to estimate the extent to which the patent holder can exercise his patent rights. A possible lawsuit will clarify these patent rights.

3.9.3 PCT patent application

The PCT (Patent Cooperation Treaty) procedure, for the worldwide application of a patent, is shown schematically in Figure 9. The single central application for the most relevant countries in the world is the advantage of the PCT procedure over national or regional procedures.

However, there are 2 characteristics that form an important difference to the other procedures:

1. The PCT procedure ends after 30 months. At that moment no patent has been granted.
2. The examination is optional.

The procedure to obtain a patent must be continued in regional or national proceedings. So the PCT procedure is only the beginning of the patent procedure. The optional examination is therefore not a decision to grant or refuse the patent, but an opinion on patentability.

The postponement of the choice of the desired countries and therefore also a postponement of costs is a reason why often the PCT procedure is chosen. Furthermore, the costs of a search report happen only once, because the search report from the PCT phase is used in the later national or regional examination. Otherwise, if parallel applications were made in different countries, these costs would have to be incurred in all the selected countries.

The PCT procedure is therefore of interest if patent rights are expected to be desired in several countries in different regions.

3.9.4 Priority year

It is usually only possible to assess whether continuing the application is useful after receipt of the search report. That is why most countries have the rule that the priority of a previous application from another (or the same) country can be used for 1 year. The applicant then has one year to determine in which countries a patent is also wanted. The later application will then receive the priority date of the earlier application. It is then as if the later application was filed on the date of the earlier application (see also article 87 – 89 EPC or article 8 PCT).

This priority right can also be used for regional procedures such as the EP procedure or for the PCT procedure. It is therefore possible to start with the patent application in one country and then go to the worldwide PCT procedure within 1 year. You then have the opportunity to estimate the usefulness of the patent application before larger costs have to be incurred.

3.9.5 Patent procedure of the Nereda technology

Figure 10 shows an overview of the procedure for the patent application of the Nereda technology up to grant of the patent.

The first patent application NL 1021466 A for this technology was filed in the Netherlands. This application document was published and the patent granted 18 months after the filing date. Due to certain rules in the Dutch patent act there is no examination in the granting procedure in the Netherlands and the patent was granted automatically.

Before the end of the first year of the filing of the Dutch patent appliciation a second patent application was filed as a PCT application WO 2004/024638A. The second filing claimed the priority of the first filing. The PCT procedure ends after 30 months.

They decided to continue during the PCT phase in various international procedures amongst others through a European application EP 1 542 932 A. Via the PCT procedures national procedures have started and patents have been granted in the Canada (CA), China (CN), Japan (JP), Russia (RU), the United States of America (US) and South Africa (ZA). Via the EP application procedure patents have been granted in Denmark (DK), Spain (ES), the Netherlands (NL), Poland (PL), Portugal (PT) and Slovenia (SI).

As can be seen, the patent was eventually granted in 12 countries. Next to the costs to build and maintain a patent portfolio, business and market development play an important role in the decisions to file patent applications in various countries. We assume that both the business strategy played an important role in the decision of the patentee to file patents in multiple countries thus anticipating that in these countries once the patents have been granted the technology will be commercialised either by direct sales or via licensees.

3.9.6 Granted patent for the Nereda technology

From the search report of the patent application WO 2004/024638 A it becomes clear that the examiner at the patent office identified five novelty destroying documents. The contents of these documents describe either partially or fully the nature of the invention as described in the 10 claims of this patent application. These documents have not only been identified for the sake of the patent granting process but have also been communicated to the applicant by January 2004 and registered in open access databases. Next via EP 1 542 932 A the patent attorney and the applicant continued to adapt claim 1. During that same period the applicant has made a request for a transfer of ownership of the patent to engineering company DHV ltd. In 2008 the EPO decides that the adapted patent application can be granted, which happened in 2009 after the term for opposition of 9 months has lapsed.

The adapted main claim 1 as described in EP 1 542 932 B now reads as follows, whereby the amendment texts for certain features are inserted in italics:

A method for the treatment of waste water comprising an organic nutrient, wherein the waste water is brought into contact with microorganisms-comprising sludge particles, an oxygen-comprising gas is fed to the sludge particles, and the method further comprises the settling of the sludge and the discharge of organic nutrient-depleted waste water characterised in that: in a first step the waste water is fed to sludge granules, under anaerobic conditions; after the supply of the waste water to be treated an oxygen-comprising gas is introduced in a second step, wherein the oxygen concentration is less than 5 mg/l , with the granules being in a fluidised condition and at the end of the second step or at the beginning of the third step sludge granules are removed; in a third step, a settling step, the sludge granules are allowed to settle.

Two extra features have been added to the main claim. With these additional features the description of the Nereda technology is now clearly defined vs. yet known inventions and prior art in order to be concisely claimed.

You see that the scope of protection of the granted patent is reduced compared with first EP patent application (A1 document). This also indicates the importance of the dependent claims and of a sufficiently detailed and complete description. The claims can then be modified with additional features mentioned in the dependent claims or the description. With these additional features it is possible to overcome the objections to the granting of the patent. These features must already have been described in the patent application, as they can not be added later after the original filing of the application.

3.9.7 Patent family

You have seen from the example that a first patent application resulted in several equally granted patents in the different countries. These patent applications and granted patents have practically the same content. However, they are all published separately.

Most of these publications are included in the patent databases. However, when you are searching, you don’t want to see every publication with the same content separately. That’s not helpful. If you have seen one, you also know the content of the other publications.

In the patent databases, the publications are therefore grouped by family. A family of patents is therefore a collection of patent applications and patents that have the same content. The grouping is done automatically, using the relationship with the first filed application (the priority document) to group the documents. However, this may sometimes not be correct if a non-standard procedure has been followed.