Patent Novelty in the Egyptian Patent Law

Novelty is one of the three main requirements for the patentability of an invention namely; novelty, inventive step and industrial applicability.

Novelty is defined by Article 3 of the Egyptian IP Law

Article 3

An invention shall not be considered wholly or partly new:

(i) if, before the filing date of the patent application, a patent application has been filed for the same invention or a patent was already issued in or outside Egypt for the invention or part thereof;

(ii) if, before the filing date of the patent application, the invention was used publicly in or outside Egypt, or the description of which was disclosed in a manner so as a person having expertise in the art is able to exploit it.

According to the provisions of the preceding Article, disclosure shall not include displaying the invention in national or international exhibitions within the six months before the date on which the application was filed.

The Regulations shall specify the conditions and the procedures for the disclosure of a patent.

Before commenting on the said article and particularly on Article 3 (i) let us state that for most countries novelty is calculated from the disclosure date and not from the filing date. This applies for example for The European Patent Law, the Canadian Patent Law, the Jordianian Patent Law and the Gulf Cooperation Council Patent Law.

For example novelty according to the European Patent Convention is specified by Article 54

Article 54

(1) An invention shall be considered to be new if it does not form part of the state of the art.

(2) 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 European patent application.

(3) Additionally, the content of European patent applications as filed, the dates of filing of which are prior to the date referred to in paragraph 2 and which were published on or after that date, shall be considered as comprised in the state of the art.

(4) Paragraphs 2 and 3 shall not exclude the patentability of any substance or composition, comprised in the state of the art, for use in a method referred to in Article 53(c), provided that its use for any such method is not comprised in the state of the art.

(5) Paragraphs 2 and 3 shall also not exclude the patentability of any substance or composition referred to in paragraph 4 for any specific use in a method referred to in Article 53(c), provided that such use is not comprised in the state of the art

Reference is made here to part (2) and the phrase “made available to the public”

The novelty is defined in a similar manner for most of the laws of different countries.

Article (2-i) of the Egyptian Patent Law will result in that if a patent application is filed in Italy for example on January 2, 2012 and a corresponding patent application is filed by the same applicant in Egypt on January 3, 2012 without claiming the priority of the application filed in Italy one day before, the Corresponding Egyptian Patent Application  will be rejected by the Egyptian Patent Office for back of novelty despite the fact that of course no publication or disclosure to the public has taken place.

Furthermore some may see that Article (3-i) is in conflict with sections (4-C-4) and (4-D-4) of the Paris Convention which Egypt is a member of and which is a part of the Egyptian Law.

Article 4

(4) A subsequent application concerning the same subject as a previous first application within the meaning of paragraph (2), above, filed in the same country of the Union shall be considered as the first application, of which the filing date shall be the starting point of the period of priority, if, at the time of filing the subsequent application, the said previous application has been withdrawn, abandoned, or refused, without having been laid open to public inspection and without leaving any rights outstanding, and if it has not yet served as a basis for claiming a right of priority. The previous may not thereafter serve as a basis for claiming a right of priority.

D

(4) No other formalities may be required for the declaration of priority at the time of filing the application. Each country of the Union shall determine the consequences of failure to comply with the formalities prescribed by this Article, but such consequences shall in no case go beyond the loss of the right of priority

Finally the text of Article (3-i) is somewhat confusing since it seems to be enough to state the Article (3-i) as “If before the filing date of the patent application, a patent application has been filed for the same invention in or outside Egypt for the invention or part thereof.”

Written by: Dr. Ahamd Donia
AGIP Egypt