Pre-filing disclosure of invention to non-skilled audience may destroy novelty

According to a recently published decision of the Italian Board of Appeal, the level of skill and understanding of an audience to which a pre-filing disclosure is made has little or no bearing on whether the disclosure is novelty destroying.

According to Articles 46 and 47 of the IP Code, an invention is considered new "if it is not comprised in the state of the art". The "state of the art" is defined as "anything that has been made accessible to the public before the date of filing of the patent application, in the territory of the state or abroad, by means of a written or oral description, by use, or in any other way". In other words, in Italy - as in most patent systems around the world - the concept of novelty is "absolute" or "universal".

Novelty-destroying events can be divided into two types: prior art (not discussed here) and pre-filing disclosure.

In Italy, a pre-filing disclosure that makes an invention accessible to the public has always had the effect of destroying the novelty of that invention. However, previously the particular circumstances in which such disclosure is made have always been relevant and evaluated under two "profiles":

  • The objective profile, where the disclosure must provide sufficient details about the invention. For example, if the invention includes a particular internal mechanism, a novelty-destroying disclosure must necessarily disclose this mechanism; novelty will not be destroyed if only the external aspects of the product are revealed.
  • The subjective profile, relating to the particular audience to which the disclosure was made.

Over the years there has been little disagreement over the objective profile; however, debates regarding the subjective profile have been more controversial.

Italian law has traditionally adopted a classic interpretation of the subjective profile, in which pre-filing disclosure is novelty destroying only when it is made to an unspecified number of people who have the technical skill to understand the invention and are able to obtain sufficient information to reproduce and implement it. In other words, the Italian approach focused on the determination of whether the public to which a disclosure was made was skilled in the field of the invention.

This classic interpretation was applied by the Board of Appeal in Decision 9291 (19th April 2010), which continued a line of cases in this area dating back to 1963.

Drawings describing an invention relating to mechanical technology were disclosed to people who did not possess sufficient background and training to understand precisely what the drawings disclosed.

The lower court held that this pre-filing disclosure prejudiced the novelty of the patent even though the drawings were not revealed to technicians. As a consequence, the patent at issue was declared void. The patent applicant appealed this decision to the Board of Appeal, arguing that according to the classic interpretation, no pre-filing disclosure was made since the audience was not skilled in the field of the invention, and thus the subjective profile was not fully satisfied.

Board of Appeal decision
Section I of the Board of Appeal issued Decision 4740, and its reasoning has now been published.

The decision states as follows:

"It is prejudicial to the novelty of the invention and to the patentability of same, any event of pre-disclosure that is sufficient to provide the essential and characteristic elements of the invention, so as to make possible its implementation by someone skilled in the art. However it is irrelevant whether the subjects who are aware of the disclosure have a specific expertise, or are able to precisely grasp the specific elements of the invention, and to proceed to its implementation, being rather sufficient that they are able to implement the invention having grasped its general attributes, and are able to transmit the information necessary for the exploitation of the innovative idea."

The Board of Appeal decision is in sharp contrast to the classic position described above. Indeed, the decision states that the audience need not have in-depth knowledge of the subject matter; nor does it need to comprise experts in the specific field.

Thus, no in-depth study of the aptitude and skill of the audience is necessary in order to determine whether the disclosure is novelty destroying. In fact, the audience could be completely unknowledgeable about the disclosed subject matter – it is required only that the audience be able to pass or transmit the disclosed invention to others.

Before this decision, issues before the courts concerning the subjective profile of pre-filing disclosures – particularly those regarding the audience’s skill and knowledge – were lengthy and time consuming. By holding that an analysis of the subjective profile is unnecessary, the new approach outlined by this decision should simplify and speed up litigation involving pre-filing disclosures.

This is an Insight article, written by a selected partner as part of IAM's co-published content. Read more on Insight

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