Industrial Property Law

To be patentable, an invention must be new. It is considered as such if it is not included in the state of the art (Article L. 611-11 IP Code) at the time protection is sought. The state of the art is everything that has been made available to the public before the filing date of the patent application, by oral or written description, usage or any other means (Article L. 611-11, paragraph 2, IP Co …

Concept

To be patentable, an invention must be new. It is considered as such if it is not included in the state of the art (Article L. 611-11 IP Code) at the time protection is sought. The state of the art is everything that has been made available to the public before the filing date of the patent application, by oral or written description, usage or any other means (Article L. 611-11, paragraph 2, IP Code). It includes, in particular, the contents of French patent applications and European or international patent applications designating France, filed prior to the filing date of the patent in question and not published until that date or a later date (Article L. 611-11, para. 3, IP Code) . A patent application must, with certain exceptions, include a search report on the elements of the state of the art which may be taken into consideration to assess the patentability of the invention, within the meaning of Articles L. 611-11 and L. 611-14 of the Intellectual Property Code (Article L. 612-14 IP Code).

Whether an invention belongs to the state of the art presupposes that the public has access to a description of it, even if they are not actually aware of it . The invention must have been brought to the attention of the public in a manner sufficient to enable them to understand it, and to possess the technical information necessary for its realization . The expiry of a confidentiality agreement without specific action to make the invention accessible to the public , the fact that the invention was in the personal possession of a third party prior to filing , the fact that the inventor is testing the invention  or the fact that an employee discloses the broad outlines of the invention which are already accessible to the public  do not in themselves constitute sufficient publicity. On the other hand, the disclosure of documents and plans which reproduce all the characteristics of a prototype  to a third party, the issue to specialist engineers and technicians of a quotation containing the characteristic elements of the invention, which are of interest to a small number of specialists, without any indication of confidentiality , or the carrying out of tests of the invention by an undertaking which takes no precautions to avoid indiscretion , constitute disclosure.

Disclosure implies that the information is accessible to the public without infringing the rights of a third party. Information is not accessible to the public if it is known only to persons bound to secrecy, notably because of their professional status or a confidentiality clause, which cannot be likened to a mere reference to ownership affixed to documents . The disclosure of a general technical element does not necessarily deprive a specific technical element  claimed of novelty unless it is explicitly described in the cited prior art .

Lastly, novelty is assessed in relation to a person skilled in the art . It is absolute in time and space: it is destroyed if disclosure occurs before the patent application is filed, in any country whatsoever. The novelty of a main claim does not necessarily entail the novelty of any dependent claim .

Cass. com. 3 January 1985, LawLex202200001817JB, which states that an unpublished patent application can be used against the claimed invention to assess its novelty, but not its inventive step.

See notably EPO Search decision T 0538/09 of 11 February 2015, which upholds the accessible character of a university thesis for which there is no indication that it was confidential or subject to restricted distribution.

Cass. com. 17 March 2015, LawLex201500000366JB, which specifies that the obligation of confidentiality must be interpreted strictly; Cass. com. 7 October 2008, LawLex202200001129JBJ.

CA Paris, 13 September 2024, LawLex202400006622JBJ.

Cass. com. 3 April 2012, LawLex202200003529JBJ, which states that the invention is novel in its function if the information drawn from the patent application, which describes the prior art, do not enable a person skilled in the art to design the process described by the disputed patent by means of simple operating processes.

Cass. com. 6 May 2008, LawLex202200003328JBJ.

Cass. com, 4 January 1994, LawLex202200010618JBJ

Cass. com. 15 June 1965, LawLex202200001826JBJ.

Cass. com. 22 May 1973, LawLex202200002132JBJ; Cass. com. 23 November 1971, LawLex202200010621JBJ.

CA Toulouse, 11 February 2011, LawLex202200001063JBJ.

Cass. com, 17 March 2015, LawLex201500000366JBJ.

Cass. com. 19 May 1987, LawLex202200010620JBJ.

Cass. com. 22 May 1973, LawLex202200002132JBJ: in this case, the undertaking had placed its invention in an open-air enclosure, the gate of which remained open and accessible to people from outside the undertaking and visible from many surrounding homes.

Industrial Property Law

256. Concept

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Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

256. Concept

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Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

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