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[klaviernista]

I need some quick feedback re: the impact of licensing negotiations in absolute novelty jurisdictions.  Specifically, I need to know:

1.  What, if any, impact do licensing negotiations have on the ability to patent a technology in an absolute novelty country, e.g., Europe?  Can licensing discussions (even in confidence) constitute a novelty destroying on-sale bar?

2.  Assuming that licensing negotiations can destroy novelty, what amount of disclosure is permissible without running afoul of the absolute novelty standard?  E.g., if a patent application has been filed before the negotiations (assume it is available under the paris treaty for priority purposes), must the licensing negotiations be limited to what is disclosed in the application?  I.e., if negotiations extend to unpatented technologies not within the scope of the filed patent, will the novelty of those unpatented technologies be destroyed in an absoluted novelty jurisdiction?

3.  What role, if any, does confidentiality  play in the absolute novelty analysis.  I know that public disclosures will destroy novelty, and that disclosures even to a limited audience can destroy novelty.  But I don't know how the absolutel novelty rules treat disclosures that a) constitute an offer for sale of a technology; and b) which are made in confidence (i.e., under a confidentiality agreement).

If anyone has any insight into these particular issues, I would love to hear it.  Bartmans/Kaitlin, your input would be of particulr interest.

Thanks,

Klav

[bartmans]

Klav,

the assessment of novelty in absolute novelty systems like the EPC places the confidentiality of the information exchange central. This has been established in the case law of the Boards of Appeal especially in the following key decisions:

T482/89: document/information is to be considered as prior art if one person could have gained access without breach of secrecy.
T830/90: information exchange that is governed by a confidentiality agreement is not considered to be prior art.
T152/03, T906/01: secrecy can be assumed even when no written agreement is in place, however T173/83: if nothing in correspondence points to secrecy you are again at the wrong side.

Some special cases in which persons are not regarded to be part of the public (and hence no public disclosure has occured) are disclosures to the employees of the applicant (T1085/92), disclosures to employees of a firm that makes a model (T799/91) and disclosures to employees of a firm that is engaged for testing the invention (T221/91 and T782/92).

You are also mentioning (offer for) sale in your post. A recent decision where the secrecy of a sale was found to be distinct from the secrecy of the object can be found in T1511/06 (see http://k-slaw.blogspot.com/search/label/Availability%20to%20the%20public).
Under this link you will find some more recent decisions in this matter.

[klaviernista]

Thanks!