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CONTENTS
Introduction...............................................................................................................................................3
Originality requirement in English patent practice................................................................................4
Comparisons with Other Jurisdictions....................................................................................................6
Russian Federation..................................................................................................................................6
Netherlands..............................................................................................................................................7
Japan........................................................................................................................................................7
Conclusion................................................................................................................................................10
Introduction
In the view of Bouchoux (pp. 336), a patent is a legal right often granted by a government or

relevant authority permitting the owner to prevent other parties from using, making, importing,

or selling an invention. Patents are categorized into three major phases: plant patents, design

patents, and utility patents. The latter phase of patents is common as it is granted for worthwhile

projects or objects. The first party to apply is granted patent rights. Notably, not all inventions

and discoveries are eligible for patent protection under the law. The majority of that calls for

patenting include, among other things, new and useful processes, manufacture, machine, useful

modifications & improvements, and composition of matter. Therefore, for an invention to be

deemed valid for patenting, the inventor must demonstrate that the invention meets the requisite

elements as enshrined hereinabove. The discovery or invention must be novel, useful, and non-

obvious.

By dint of the UK law, new claims are allowed to make and exploit their invention for twenty

years wherein a disclosure clause is inserted for describing the invention or discovery in clear

terms. During this period, persons who conceive the invention independently are consequently

constrained. The stringent measures for a patent grant are the major contributing factors that

influence the patenting exercise to be strictly followed and ensure that no prior invention was

made concerning that which a new claim claims as a right. Instead of this, what then can be done

to ensure that people still do what they did prior to the granting of the patent? Additionally, how

is the rationale behind information disclosure upheld? In this discussion, a comprehensive

research approach has been made to affirm that the law protects both the inventor and the

purported beneficiaries or third parties to an invention.

The novelty requirement for patents encapsulates patentability, and the invention is new. For this

to be determined as the case, a comparison of the invention as claimed to be and state of the art is

made. Upon determination that the invention is new, this is classified as "novel ."This arises

from the novelty claim, which is premised on the newness of the invention or discovery. Any

prior inventions revealed are classified under the "anticipated" limb.

Originality requirement in English patent practice

The second section of the statutory law 1, it postulates the requirement for novelty under UK

patent law. According to the statute2, it is outlined to realize the same impact in England as the

conforming tenets of the European Patent Convention. Section 2's wording is very similar to

EPC Article 54.

According to the statute3, an invention is considered novel if it does not have elements similar to

all material (including a invention, a procedure, data about whichever) that has been made

available to the public (whether in the UK or elsewhere) at any time preceding the priority date

of the creation.

When determining whether a patent claim lacks innovation, the instruction inherent in the earlier

publication may be considered in addition to the disclosed knowledge. That is, the experienced

individual can utilize their broad sense to derive that various typical element of invention,

technique, etc., ought to be required revelation component and are therefore tacitly extant. As a

result, in UK practice, the definition of novelty is larger than "photographic novelty." Still, a

knowledgeable individual may not presume that some frequent then unique qualities are present;

this would be a problem of undoubtedness in its place. This discrepancy is highlighted in

1
Patents Act 1977
2
Section 130(7) of the Act, Ibid
3
Section 2(1) of the Act,
General Tire v Firestone.4, which established the widely accepted belief in English patent law

that a revelation that would encroach on a right in a patent claim if the claim was approved

establishes a want of innovation in a similar right prior to approval. However, the preceding

inventor and the new claim might have advanced similar technology from unlike perspectives.

However, if following the guidelines in the preceding originator's work unavoidably results in

anything getting created that, if the new patent were valid, amounts to a violation of the new

patent’s right, this condition establishes that the new claim's prerogative was expected. However,

in the event that the previous publication encompasses a course that could be executed in a way

that would breach the new claim's claim but is equally probable to be handled in a manner that

would not, the new claim is inevitably unexpected, notwithstanding if the claim fails merit wise.

According to Firestone, "a previous work must give pure and distinctive pointers showing the

new development. Distinctive markers showing a new claim’s innovation won’t be enough. The

earlier architect must demonstrate that they erected their innovation in the exact location first.

The same criterion got utilized during claim number 485 of 1991, which concluded that a prior

disclosure must be enabled in order to anticipate an invention. Except if the mode of operation is

so undisputable that no elucidation is required, a discovery was not availed to the community

simply by a publicized announcement of its presence. According to the Asahi5 decision, the test

for determining if the matter in a patent application unpublished at the priority date of the

application in suit forms part of state of the art under the statute 6is the same as the test for

determining whether the matter in a prior publication made available to the public forms part of

state of the art under the statute7. In both circumstances, the subject must be facilitated.

4
General Tire v Firestone [1972] RPC 457
5
Asahi’s Application [1991] RPC 485
6
section 2(3) of the Act
7
section 2(2) of the Act.
Moreover, while evaluating innovation, the material that is part of state of the art according to

the statute8 is treated precisely the same as a matter that is part of state of the art under section

2(2), as reaffirmed by claim number 6 of 2003.9

Comparisons with Other Jurisdictions

Russian Federation
The uniqueness criterion is contained in Article 4 of the Russian Federation's Patent Law 10.

When determining the originality of a creation, the preceding body of work comprises all

applications submitted within the country by individuals for innovations and efficacy

representations, as long as they have a prior urgency and the materials with which any person

may become acquainted.11

According to paragraph 19.5.2 of the Office's Rules governing the process of obtaining an

issuance of a patent, 12
a creation ought to be documented in an expected manner through a

preceding matter while failing to satisfy a threshold of originality provided a preceding body of

work integrally unveils ways which have structures undistinguishable from structures within an

application's claims, including the classification of the resolve of a creation.13

When determining the originality of a creation, the preceding body of work includes innovations

together with their prototypes which have patents within a country, only if there exists a previous

urgency. Because regulation discourses restriction of duality in issuance of patents, earlier claims

retained by a similar claimant of an unreviewed claim are considered to be within the preceding

8
section 2(2) of the Act.
9
SmithKline Beecham’s Patent [2003] RPC 6
10
http://www.fips.ru/ruptoen2/law/patent_law.htm.
11

12
http://www.fips.ru/npdoc/VEDOM/PR_is00.HTM.
13
body of work. Additionally, data included as part of rights belonging to a relevant patent will be

solely considered.

Netherlands
Prior art in the Netherlands includes applications submitted previously then issued following an

application’s date of commencement of proceedings still being considered to evaluate originality.

An expansion of this nature amounts to a different approach. The usual norm is that previous

body of works’ data ought to be availed to public. The rationale behind the exclusion aims at

avoiding a single innovation obtaining a patent twice.

This illustrates that whatever a person skilled in the profession learns immediately from the text

while reading it is taken into account in addition to the preceding application's textual content.

Additionally, if the claimed innovation is only a standard application. The claimed invention is

not seen as original by one skilled in the field and is drawn from an earlier application. In other

cases, it was determined that the claimed invention lacked originality if the distinctions from the

subject matter specified in the prior application only applied to well-known alternatives to a

person skilled in the art.

It makes no difference whether the applications are from the same person or not for determining

the preceding body of work’s consequence previous claims. In accordance with this, the prior art

impact of an earlier application is unaffected by the assignment or transfer of the claims to a

third party.

Double patenting is not entirely prohibited under the current Dutch procedure, however,

according to the Netherlands Industrial Property Office's statement to the SCP Forum. Due to

equal implementations of the ideas, the second patent may be more inventive than the first, yet

the two patents' purviews may overlap.

Japan
The basic innovation measure and the previous art effect of previous claims are governed

separately under Japanese Patent Law. Section 29(1) addresses the novelty criterion in publicly

known previous work. Section 29bis describes the prior art effect of previous applications,

which, along with Section 39, governs precedence over conflicting claims. Section 29bis states

that if a creation requested during patent claim is undistinguishable to an origination detailed

through description, illustrations that were initially combined with the entreaty of an alternative

patent or prototype claim, the commencement of proceedings that was earlier before the

commencement of proceedings of the patent claim and that got made available for public

consumption after the commencement of proceedings of the patent claim, a patent will get

issued. Section 29bis does not apply in instances whereby the creator or claimant claiming the

preceding claim and the claim being reviewed is identical.

To put it another way, anti-self-collision decree applies. So long as the other requirements for

patentability are satisfied, the requested creation is patentable if it is disclosed but not demanded

in the previous submission, and the claimant or originator is identical for the submissions. The

phrase "a creation ... revealed in.... alternative submission" in Section 29bis refers to an

innovation that was recognized by the "matters detailed" or "matters substantially defined, albeit

not accurately" in the other submission on the date of commencement of proceedings according

to the Examination Guidelines. It is clarified that "matters substantially described, but not

literally" refers to issues immediately derivable from the matters disclosed, taking into account

widespread public data at the period of the other application's submission. The phrase "broad

common knowledge" refers to technologies commonly known to a professional artist or topics

not subject to empirical rules. "Body of work" refers to commonly understood know-hows in the

pertinent mechanical turf, including availability of multiple previous body of work publications

explaining such know-hows, know-hows well identified all over the business, or renowned

machineries that don’t require further explanation. Inclusively, "frequently utilized body of

work," which refers to recognized and extensively employed bodies of work. In summary, the

subject matter that a individual accomplished in art may recognize based on the explicit

disclosure and the implicit disclosure that can be found in the other application determines the

breadth of the disclosure. be immediately derivable from the contents specified in the other

application, taking into consideration a person versed in the art's broad understanding

When the additional claim explains an exact notion, inevitably there is indication of a

nonspecific notion involving the matching sort or shared traits. Whereas alternative applications

represent a generic notion, it does not imply or indicates any specific subject matter (apart from

where such a precise notion can be unswervingly resultant from such a broad perception,

considering the mutual wide-ranging information).14

According to the Examination Guidelines, when there is no distinction between the requested

creation and the origination divulged in the previous claim, they are undistinguishable. Despite

the fact that there exists a variance amid the two brainchildren, it is still considered a very slight

change provided it encompasses the totaling, obliteration, or substitution of renowned or

frequently used bodies of work that lacks fresh impact in incorporating solutions to problems

(i.e., is essentially indistinguishable). It represents fundamental difference from finding

"distinctiveness" amongst the requested origination and thematic concern disclosed in a publicly

14
Examination Guidelines, Chapter II-3, 2.4(3).
available previous body of work. To determine originality, there must be a difference between

the requested origination and the thematic concern exposed in the periodical.

When a requested origination is demarcated in the substitute, if one of the replacements is the

same as the creation disclosed in the previous claim, the requested creation is deemed to be

similar to the previous claim's innovation.

The Right of the State to Override Third Party Rights

According to the statute, the state reserves the right to utilize a third party's patent despite lack of

consent from them.

Although the owner is not required to offer approval for the administration to employ his patent,

the applicable administration section is obligated to apprise the owner following the

commencement of usage. Often, they are mandated to pay the owner a fee for aforementioned

usage as was observed in the Plc case15.

Plc examined in depth both the precise conduct that the relevant government agency must

expressly allow in writing in order to rely on the defense and the definition of "for the services of

the Crown" as it applies to sections 55 and 56 of the PA 1977. It also reviewed whether

conducting testing utilizing the third party's patented technology may be considered authorized

government use for the purposes of this defense. The dispute also involved if Plc’s employment

of the defendant's proprietary knowhow in testing their MTPAS feedback might potentially be

considered Crown usage.

The question of if such trying qualified for "practice during crisis," permitted following

directives from the responsible governmental office, was examined. It was determined that since

Plc's trying amounted to neither extreme nor conducted mala fides, nor did it relate with any of
15
[2021] EWCA Civ 205, [2021] R.P.C. 10,
the company's other activities, it qualified for this emergency use and could therefore be used by

the Crown. He also ruled that IPCom's patent-infringing equipment may be kept in use as long as

the MTPAS request remained active.

Conclusion
Although a concept of novelty used in the UK and under the EPC goes beyond "photographic

novelty" to include implicit disclosures, patent protection can still be obtained in some cases

because obviousness does not apply. The prospect of expanding the prior art covered by

innovation in this area may help to meet the goal of preventing duplicate patenting in cases when

discoveries are practically similar. The scope of "enlarged novelty" should, however, be clear

and limited than that of "obviousness. A concept of "enlarged novelty" might encompass what is

now covered by novelty under European practice, as well as a limited number of different

particular scenarios that the International Bureau should investigate in their research. These may

include: a) particular species falling within the scope of a general idea in the prior application but

excluding "selection innovations," and b) equivalents or replacements to aspects of the prior

application's invention that are part of the relevant art's common general knowledge.