Int. Lizenz- und Patentrecht > Stand der Technik

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Dear management, I have just returned from the trade fair stand full of enthusiasm and must share this with you: Since 8:00 this morning, we have been presenting our new samples at the trade fair—and the response has been simply overwhelming! Shortly after the opening, a small line formed in front of our booth, and many visitors not only took the samples with them, but also asked for more information right away. Our team is constantly in conversation, and even the coffee cups are piling up behind the counter because no one has had time to clean up in between. 😊 The samples are going down a treat, and some customers immediately asked when they could order. Particularly noteworthy: an investor I met by chance expressly recommended that we patent the products. Perhaps he was so convinced by our product because I showed him the list of ingredients. Do you think we should try to get a patent? Thank you—the atmosphere here at the booth is great! March 5, 2025, will go down in the history of our company. We're really gaining momentum! Best regards

The assessment of the patentability of an invention is based essentially on the concept of the state of the art. An invention is considered new if it does not belong to the “state of the art.” It is considered inventive if it is not obvious to a person skilled in the art based on the “state of the art.”

The basic definition of the state of the art used in most patent systems worldwide is therefore: “The state of the art comprises everything that has become public on the day before the filing date, i.e., everything that has been made available to the public before the filing date.”

Publicity

Inventions and technical content are made available to the public in a variety of ways. This can be through lectures, presentations, written publications on the Internet, in specialist media, advertising materials, or through the direct sale of items. Such disclosures usually result in the invention being considered prior art, which can limit its patentability.

By handing out product samples to individual trade fair visitors and communicating the list of ingredients to the investor, the invention, i.e., the composition of the product, is disclosed.

The term “public” refers to an unrestricted group of persons, i.e., persons who are not bound to secrecy vis-à-vis third parties and who are permitted to pass on the content of the disclosure. Once an invention has been made available to such a group, it is considered to be publicly known. The theoretical possibility that a member of the public could have become aware of the disclosure is sufficient for it to be considered published.

The samples are distributed to visitors directly at the booth. Trade fair visitors who take product samples from the booth are considered to be the public, so that the information disclosed to trade fair visitors becomes prior art. Similarly, investors are generally considered to be part of the public.

Disclosure to the public does not occur if information is exchanged but a confidentiality agreement has been concluded between the parties involved or there is a legal obligation of confidentiality. This is the case, for example, when an inventor discloses his invention to a potential business partner under a confidentiality agreement, in the case of internal discussions, or when the company seeks advice from a patent attorney who is legally bound to secrecy. In such cases, the person bound to secrecy is not part of the “public,” as the disclosure may not be freely passed on. As long as these confidentiality agreements exist and are complied with, the invention is not considered public, and this communication does not count as prior art.

A sensible approach to prevent your own information from becoming prior art before a patent application is filed would be to agree on confidentiality with persons to whom this information must be disclosed. In particular, the transfer of the list of ingredients to the investor, which may be necessary for further business development, would not have to become prior art as a result.

Aspects of belonging to prior art

An essential aspect of publications is the determination of the date on which a disclosure was made publicly available. This is crucial in order to determine whether a particular publication belongs to the prior art for a specific application. Only if it can be proven that the subject matter in question was already public before the filing date of the patent (or patent application) in question can it jeopardize novelty. Only if it can be assumed with certainty that the publication took place before the filing date can it be attributed to the prior art.

If the product samples and the list of ingredients become public and thus part of the prior art on March 5, 2025. For applications filed on or after March 6, 2025, the content of product samples and the list of ingredients will be detrimental to novelty. However, if the company acts quickly and files a patent application on the same day, i.e., March 5, 2025 (which may be realistic), it will not be affected by the prior art that has been created.

It is not necessary for a member of the public to actually take note of a publication. It is sufficient that the theoretical possibility of taking note exists. This can be illustrated by the example of a thesis that is placed in a university library. Even if no one has borrowed or read the thesis, it is considered accessible to the public from the moment it is entered in the library register. The mere possibility of being able to read the thesis is sufficient for it to be considered published.

In a large number of cases, trade fair visitors will dissolve the product sample provided in water and drink it immediately, so that the composition is not known at all. The investor may also dismiss the list of ingredients as useless. However, it is not what people actually do that matters, but what they could theoretically do. Visitors to the trade fair could—and would be allowed to—analyze the sample provided and investigate its composition. The investor can use the list of ingredients.

It does not matter who makes the disclosure, i.e., who ensures that publication takes place. Even publication by the inventor himself counts as prior art if it takes place before the filing date. However, see the possibility of filing utility models.

In the present case, the invention is being published by the entitled entrepreneur himself, specifically by his own sales staff. This makes no difference to its status as prior art.

A key aspect in determining whether a publication prevents the patentability of an invention is the scope of the publication. Not every type of presentation or public description automatically leads to an invention being disclosed in all its details and thus excluded from patent protection. Both written and oral publications, as well as disclosures through the use of a product, only prevent patenting if the invention in its entirety with all its features can be understood and comprehended by the public.

When a product sample is handed over to a third party, it becomes part of the prior art in all its features. Handing over the list of ingredients means that the technical information contained in the list of ingredients becomes part of the prior art. Any other ingredients contained in the product do not become part of the prior art as a result of the publication of the list of ingredients.

For a publication to constitute prior art for an invention, it is not sufficient for only certain aspects of the invention to be disclosed. It is crucial that the invention is fully disclosed and that the public is able to understand and implement the technical details. A mere description or presentation of characteristics that does not contain precise technical instructions is not sufficient to prevent patenting. There are also descriptions whose content is speculative or incorrect. Such content, which does not provide sufficient information to understand the invention, is not considered prior art.

In any case, the product itself is sufficiently disclosed so that the content counts as prior art. If the product can be reproduced based on the information in the list of ingredients, e.g., by simply mixing the ingredients, sufficient feasibility is also given. If, on the other hand, further unknown steps are necessary to manufacture the product based on the ingredients, e.g., because the product would otherwise not be produced at all, sufficient feasibility is not given.

Exceptions to the prior art

In utility model law, a publication does not count as prior art if it originates from the inventor himself. If the utility model application is filed within six months of publication, the inventor's own publication does not count as prior art; this is also referred to as a grace period. A grace period also exists in US law for patents, where own publications do not count as prior art if a patent application is filed within one year of publication.

Even if effective patent protection is no longer possible – at the latest on the day after the trade fair – the company can apply for a legally valid utility model. In this case, the validity of the utility model is not based on the fact that it is not examined – even during the patent examination, the publication would not be noticed. Rather, the utility model right excludes publications caused by the applicant himself at the trade fair from the prior art – of course, only if a utility model is registered by September 5, 2025.

A publication does not count as prior art if it was made improperly and to the detriment of the subsequent applicant. If an inventor explains his invention to a potential business partner under a confidentiality agreement, but the business partner nevertheless publishes details of the invention, this publication is improper and to the detriment of the inventor. This publication does not count as prior art if an application is filed within six months. Even though the law is generous to the inventor in this case, proving the circumstances of this abusive publication proves difficult in practice.

Even if one might accuse the sales employee of gross negligence with regard to potential patenting, he is not acting abusively in any case. For this to be the case, the employee would have to have disclosed secrets deliberately and with the intention of harming his employer. However, the fact that the employee had pre-made samples with him paints a different picture: the company deliberately made the invention public.

Publication at recognized exhibitions does not count as prior art under certain conditions. If an invention is shown there, it does not immediately count as prior art if the application is filed with the patent office within six months. However, it is important to note that not every trade fair is considered a recognized exhibition; it must be officially recognized in accordance with legal provisions. Otherwise, the presentation will still lead to the disclosure of the invention and may jeopardize its patentability.

Even if the presentation took place at a trade fair, it will not usually be an internationally recognized exhibition. Such exhibitions are usually only world exhibitions. Therefore, this exception does not apply in the present case.