A patent application may be granted where have industrial application, an inventive step and novelty. An invention shall be taken to be new if it does not form part of the “state of the art” (section 2, Patents Act 1977). State of the art consists of all matter, whether a product or simply information which has at any time before the priority date of that invention been made available to the public in the UK or elsewhere. This is known as a prior disclosure and does not cover disclosures made in confidence, for instance to solicitors or under non-disclosure agreements (‘NDA’s.)
If an inventor is not aware of this and discloses his own invention without filing his application, it will form part of the state of the art, and invalidate his own application. If for instance he has sent off a paper to a journal, or the marketing department in his company have test-marketed the product, the option of patenting will already have been lost. It is important that inventors do not mistakenly think that disclosures which they themselves make will not count against their own later patent application. This is because most countries, the UK included, operate a rule of ‘absolute novelty’.
After the initial filing the inventor has a period of one year to do further work on the invention, survey his market and decide whether he wants to proceed further and, if so, in which countries. This is because subsequent refilings will not have the original application cited against them. However it pays to remember that any added matter will not have the earliest priority date, that of the original filing. Advice to inventors therefore might be to file at the earliest possible time when the invention has mostly cristallised, but to never reveal any of it until after filing. It may be wise for subsequent development resons to wait if possible until publication (18months from priority.)
As long as the foreign applications are on file within a period of one year after the original filing, any disclosures of the material in the first filing made after such first filing will not count, because the original filing date will be the priority date (section 2, Patents Act).
Despite the importance of international conventions protecting patent rights, such conventions deal primarily with procedural issues, while substantive patent law remains governed by national laws, although a large measure of harmonisation between such national laws has been achieved, especially between the countries belonging to the European Patent Convention.
In the UK, patents are subject to the Patents Act 1977 (Patents Act). The Act came into force on 1 July 1978 and, as patents last for 20 years, it now governs all UK patents still in force.