Intellectual Property Owners Association (IPO) Board has proposed a “clarifying” amendment to Section 101(a)(1) of the Patent Act:
(a) Novelty; Prior Art.—A person shall be entitled to a patent unless— (1) the claimed invention was
patented, described in a printed publication, or in public use, on sale, or otherwise available to the publicpublicly disclosed before the effective filing date of the claimed invention, provided that no act of patenting, publication, use, sale, commercialization, or any other act, shall constitute prior art with respect to this section, except to the extent the act results in a public disclosure of the claimed invention; or
The proposal here would legislatively overrule Helsinn Healthcare S.A. v. Teva Pharm. USA, Inc., 139 S. Ct. 628 (2019) and remove undisclosed sales activity & commercialization from the scope of prior art. Europe uses this approach found in Article 54 of the European Patent Convention:
- An invention shall be considered to be new if it does not form part of the state of the art.
- 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.
- 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.
EPC Art. 54. Note that 54(1) and 54(2) are parallel to 35 U.S.C. 102(a) while 54(3) is parallel to 102(a)(2) which the IPO does not propose to change. Regarding these secret prior patent application filings identified in 54(3) and 102(a)(2); the European approach is broader than the US in some ways because it creates prior art even when the prior filing is the same inventor / owner; at the same time, the European approach is narrower than the US because 54(3) prior art does not apply to the inventive step (obviousness) analysis.
An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art. If the state of the art also includes documents within the meaning of Article 54, paragraph 3, these documents shall not be considered in deciding whether there has been an inventive step.
EPC Art. 54(3).
I’m troubled for it not based on feelings, but because it’s odd to me to have motivation to modify that potentially comes from one’s own nonpublic work. In research, much of the motivation for new work comes from one’s own prior work. Do we have a better understanding now, with fewer holes? Because the part about the horses is less than clear to me.
I am with you in preferring a system without “secret” prior art. That said, why do you find the possibility of one’s own work being used against one troubling in just this circumstance. A person’s own prior work is frequently cited against the person’s later work. Why does that point become more troubling in this one circumstance?
The sheer volume of nonpublic art qualifying under the vague “competitive exploitation” standard of Metallizing greatly multiplies the amount of self-defeating references and I think in practice renders most patents obvious. Also, all of a firm’s internal research processes potentially relevant to the claimed invention technically should be reported in an IDS. This cannot be a correct result.
“This cannot be a correct result.”
It is not.
This is ALSO why — as I have written extensively — the Soliloquy (related to the AIA) sought to rectify the past errors of some (admittedly great legal minds) who confused and conflated different legal protections arising out of our Sovereigns different Constitutional drivers.
(And please note that this does NOT change the legal notions involved in actually filed ‘Secret Prior Art,’ the Rules of State of the Art, and the US Sovereign’s Quid Pro Quo – and related exceptions thereto).
Quite opposite the rather feeble protests of MaxDrie, the wrinkles here are exquisite.
Maybe Greg will have better luck pulling answers out of the likes of MaxDrei (but then again, both are inte11ectual cowards).
No problem with the reference to the horses – that was directed at another.
Would actually like to explore “motivation to combine” with you, but to the immediate point, I will merely state that EACH of the legal tests for novelty and for non-obviousness depend on a legal notion of State of the Art, and that notion is NOT measured BY any “real person,” but instead is measured by a legal fictional person.
I fully allow that any Sovereign may well choose to set up and pursue their patent laws as the choose. Here in the US, our Sovereign has chosen a consistent view of that legal fictional person across the related, albeit different tests of novelty and non-obviousness.
Your views may well be grounded in the choices of a different Sovereign. I can respect that. I hope that you can respect our Sovereign choices (some — like the person for whom the “horses” reference is directed to — cannot).
I don’t follow the sovereign point. The distinction between the inventor and a third party for purposes of secret prior art is completely non-statutory – indeed, astatutory. That’s why Metallizing is best understood as rendering an equitable forfeiture. Certainly if judges could create the doctrine they could at least limit its impact to novelty and carve out 103, as is done with the analogous arts doctrine.
“ The distinction between the inventor and a third party for purposes of secret prior art is completely non-statutory – indeed, astatutory.”
Actually, you are quite wrong on this point.
Secret prior art does NOT feed any type of “real person” evaluation of the (quite statutory) notion of either novelty or non-obviousness. As I have been discussing, these notions are instead set by a legal fictional person.
The notion of “secret prior art” — as I am discussing that term — does NOT include truly secret efforts, but instead includes that material which has been supplied to the Patent Office (and our Sovereign’s well established understanding of State of the Art to include that material for BOTH legal tests of Novelty and Non-obviousness).
It may do you well to take a step back and realize that the conversations here have been at several levels.
Once again I’m referring to Metallizing art, not unpublished applications.
Thanks Dmetry — the term “Secret Prior Art” is more often used for the type of submitted, but not published, so when I see it, that’s where my mind goes first.
As to the type you are talking about, there is also no meaningful distinction between novelty and non-obviousness defeating art, now is there? (Other than the usual difference between the two)
I think it’s odd to me to have your own prior secret work supply the PHOSITA’s motivation to combine. That’s my distinction. I don’t mind having nonsecret art supplying motivation.
Dmitry,
I am not following your distinction for two separate reasons:
Are you tracking what I have been saying in regards to how the AIA has erased what appears to be your Metallizing concerns (and has done so for BOTH novelty and non-obviousness)?
The second is how you still seem so singly focused on not just non-obviousness, but just one portion of the elements of that legal test (a legal test mind you for a legal person and not judged by any real person), while you profess no care at all in regards to eliminating any ill effects from that secret ‘violation’ against novelty.
I know of no reason why one would be “ok” while the other would not be ok.
Maybe this is nothing more than a reflection of the different choices by different sovereigns (but I like the consistency of my Sovereign’s choices).
As to the analogous arts doctrine, that too is an interesting wrinkle; albeit born out of different drivers then the State of the Art.
I’m not sure if the AIA overruled Metallizing – a lot of people don’t think it did, especially given Helsinn. As for my focus on motivation, it highlights that 102 and 103 are rather different inquiries, and so it might make sense to define prior art differently for one versus the other. Which we already do under the analogous arts doctrine, sovereign or no sovereign.
Dmitry,
Certainly, there are differences between the legal tests for novelty and for non-obviousness.
But you mistake those differences and lose focus on those legal aspects that are NOT different.
Further, there is certainly no shortage of those not wanting to accept what happened in the AIA in regards to the plainly stated overhaul of how our Sovereign treats the legal aspects of BOTH novelty and non-obviousness.
However, those espousing otherwise cannot ignore the points that I have long provided (well, they certainly can choose to not address those points, but such a choice appears to merely concede that those presented points are to be taken as true).
Lastly, you mistake my comments on your focus on ‘motivation’ (or more accurately, ‘motivation to combine’).
As I have noted, it is critical to ‘get the phrase correct.’
One reason may be seen here in your own misapprehension of my questioning of your focus.
When viewed correctly, the full term of “motivation to combine” clearly denotes that the term ONLY has meaning for the (sub-element within) non-obviousness, as the legal test of novelty has no such sub-element of “combination.”
The fact that one legal test has an element that the other legal test does not is NOT why I am questioning YOUR thrust to treat the entirety of the legal tests differently — especially concerning a nature of Secrecy that impacts BOTH tests.
You keep on focusing on a difference of a sub-element, but the questioning is because your desired state affects far more than merely that sub-element, and affects the TOTALITY of the two legal tests, including aspects that are NOT different.
Dmitry, if you have any difficulty with “secret” prior art” under the patent law of Europe, just say. But for the time being though, I am supposing that your difficulty lies exclusively with the situation under US law. On that, I am not competent to explain to you so will remain silent.
I’m focusing on secret prior art US law. But I’m curious about the inventive step carve out in the statute Dennis cited.
I guess, Dmitry, you mean Art 54(3) EPC. Such a “carve out” is found everywhere in the FtF world except the USA.
I thought I had explained all that already. Is my comment at 14.1 not good enough?
Clearly MaxDrei, Dmitry is NOT talking about Art 54(3) EPC.
The very post you reply to indicates this with: “ focusing on secret prior art US law”
Your spectacles are NOT on point here.
Modified as appropriate:
“[MaxDrei], if you have any difficulty with “secret” prior art” under the patent law of [US], just say.”
Please follow your own advice. For whatever reason, you seem to expressly avoid the very thing you advise others to do when you and I converse.
Still waiting for MaxDrei to stop pretending, to put away his Strawmen, and to address many of the actual points (and wrinkles) on this thread…
So eager is he to step up on his soapbox, and yet, the points on hand here simply are not constrained to what he wants to pontificate.
Come fine sir — engage on these other points.
If you dare.
If you can.
Asked and answered, anon. 6.2.1.1.1.1
You are the only one here able to see “wrinkles”.
And as to any of your self-enthroned “points”, sorry to have to tell you, but (as even you concede elsewhere) all you are doing at this late stage is flogging your own very personal (and l0ng-d43d) hobby-horse.
Again you say that I am the only one — and again you ignore the quote that I provided directly from Prof. Crouch.
You do love proving me correct, don’t you?
What YOU take away from this is simply egregiously wrong. It’s down right hilarious in fact.
By the by, MaxDrei, your 6.2.1.1.1.1 is NOT an answer as I immediately countered that you were engaging in a strawman and misrepresenting my views as somehow being an indicati0n that ANY of my posts were solely talking about Art 54(3) EPC. Such is clearly not the case, and it is only YOUR pretending that supports your strawman.
Further, there is NO “even as you coned elsewhere” of me flogging anything. Your attempted use of that phrase just does not fit the circumstances here.
…”coned” => “conceded”
Given some of the comments here, an observation about the underlying logic of Art 54(3) of the EPC might not go amiss.
In a First to File jurisdiction, there has to be a mechanism to filter out, during examination, all those who filed but were not the FIRST to file, even those who filed just one day later. That’s Art 54(3) EPC.
Universally though, for all Applicants, there has to be an obviousness filter. What is the knowledge base of the PHOSITA who is the litmus paper for judging obviousness? Why, everything that such a notional being could have known. To use secret prior art as a basis for an obviousness rejection is cruel and unnecessary punishment of inventors everywhere. That’s the thinking behind Art 54(2) EPC.
link to epo.org
anon asserts that Art 54(2) and (3) generate “wrinkles”. Perhaps for him. Not for anybody else though.
The idea of FtF is to tell the PTO before you tell anybody else. The system frees up inventors to tell the world, risk free, the day after filing at the PTO. Useful, if you need to attract investors or customers immediately.
Sorry. Wrong adjectives. Rather than “cruel and unnecessary” I should have chosen “unusual and unfair”.
The point About Art 54(3) EPC is that filers other than the first can still get plenty of patent scope. All they have to do is claim subject matter that is i) novel over all earlier filers, and ii) non-obvious relative to everything already made available to the public before they filed at the PTO.
So think of Art 54(3) as the EPC’s prohibition on “double patenting” of identical subject matter, whether by the selfsame inventor or some other one who filed independently, one day later.
Well MaxDrei, you have availed yourself of posting at the top of the thread as a sign of climbing up on your soapbox, but there are several counterpoints awaiting your reply.
And whines about “submarine patents” and such non sequiturs do not count (at least you did admit that there is a serious difference in the actual Quid Pro Quo deals between the Sovereigns — it would be nice if you also acknowledged why this had made the traditional US patent system the world’s premier innovation protection system).
But returning to notions of legal fictions and the legal issues of novelty and non-obviousness, perhaps you think that the legal fiction of PHOSITA is not used for the legal question of novelty (in your hurry to jump to using real persons and timing of these real persons of their respective actual filings).
Hey, I “get” that a Sovereign may choose to be inconsistent, but the least you could do is own that inconsistency (and do so without such emotional whines such as “unusual” and “unfair.” Such betray the notion of that legal fiction for the rather straight forward (even as it IS inconsistent) choice of when to use the legal fiction and when to constrain such use.
As to your snark on “wrinkles,” maybe you should (again) pay better attention. You may choose to ignore the wrinkles, but that choice does not make them go away. Your choice to ignore only leaves you ‘ignore ant.’
I look forward to your substantive responses.
Is it really “unfair” to consistently use a notion of a legal fiction of PHOSITA to adjudge the legal conditions of both novelty and non-obviousness?
You appear to want to bend and see no unfairness whatsoever for the legal notion of novelty (and appear to hinge the entirety of that legal notion on the non-legal person instance of only comparing two actual real person filers) and simply declare by edict your feeling of unfairness in evaluating the legal condition of state of the art in any application of consistency of that legal state.
How tight can you clench your eyes?
How long will you attempt to project your inability to see (due to those clenched eyes) to someone else?
Note that I have fully provided that there is a difference AND that this difference is fully within the rights of the various Sovereigns to so choose. Tis unglaublich that you continue the charade that you do.
… as to “no wrinkles,” (quoting Prof. Crouch):
“ the European approach is broader than the US in some ways because it creates prior art even when the prior filing is the same inventor / owner; at the same time, the European approach is narrower than the US because 54(3) prior art does not apply to the inventive step (obviousness) analysis.”
Too funny.
Thanks. That makes a lot of sense.
Blackacre Ltd. creates a widget using a secret process. Halfacre Industries, from the widget (bought legitimately), figures out what the secret process is (they have some smart engineers). They add a step that improved the widget even more. After doing a thorough search, Halfacre cannot find any intellectual property covering the process. They decide to make a competing widget using their improved process. This improved process requires them to preform all the steps of Blackacre’s process. Halfacre does not publish anything about their process.
A) 6 months after Halfacre’s widget is on the market, Blackacre files for a patent, which ultimately grants. What is the equitable result for both companies?
B) Before going to market, Halfacre files two patents. One for the original process and one for the improved process. Both patents are granted. What is the equitable result for both companies?
In your B) example, does Halfacre fraudulently file a declaration that they are the inventor, knowing full well that they have merely reverse engineered a competitor’s invention?
A) Under your facts, the improved process from Halfacre should pass 102. Whether it is obvious is a different question, but it’s possible the improved process could pass 103 as well.
Blackacre is screwed, in my view. Gold star to the smart engineers who unraveled Blackacres market strategy.
B) Halfacre’s patent for the original process should be invalidated because it isn’t novel, in my view, because the process was already available on the market.
J,
There could be some interesting difference of opinion that just because something was able to be reverse engineered, that that something was “publicly disclosed in an enabling manner” such that the legal notion of prior art is invoked.
I disagree with your B conclusion. Blackacre’s product is not enabling art for Blackacre’s method of producing that product. Halfacre had to invent the process anew (the fact that they hit on essentially the same process as Blackacre is mere coincidence, and a fact of no legal significance). Halfacre is, therefore, the legitimate inventor and fully entitled to the patent in a world in which they beat Blackacre to the filing window.
I think that Greg may only be partially correct here.
The product may be non-enabling, but GIVEN that there is a product and a dedicated effort to reverse-engineer, it is NOT cut and dried that there is NO legal significance and one MAY argue that there may well be NO “inventing the process anew.”
I think that current U.S. law reaches an intuitively fair (for both companies) result in both cases.
A) Blackacre’s patent grants (presumably Blackacre’s product had not been on the market for a full year at the time of Blackacre’s filing), and can be used to stop Halfacre’s commercial activity. If Halfacre had wanted to block Blackacre’s patent, Halfacre had the power to beat Blackacre to the filing window. If Halfacre tarried in that race to file, it must live with the consequences. First-to-file is a harsh mistress.
B) Halfacre gets both a patent on the original process and the improved process, and these patents can be used to block Blackacre. Once again, Blackacre had the power to stop this outcome, but they tarried in in the race to the filing window, and now they must live with the consequences.
Poor Greg has forgotten about the true submarine gift of the AIA with the Prior User Right.
… if there ever was a more clear sign of ‘legislative capture’ (with the true submarine of the sui generis Prior User Right that surfaces as a Right for a non-sharing entity ONLY AFTER someone else decides to share, pays for and earns a patent property, and then goes to enforce that property right), I could not identify one.
This is FAR MORE a “gift” to the established and entrenched entities and an invitation to secrecy and guild-like behavior than the (proper) differentiation of different protections under the different Constitutional drivers of Trade Secret and Patent (with the as properly viewed full Quid Pro Quo maintained) that instead draws so much attention and attempts to perpetrate misconceptions.
Where are you, OSitA…?
Yeah, to Dennis’s point at the end, I’m still not clear how secret prior art works in the obvoiusness context. Can internal research expertise make one’s own future inventions obvious to try?
Dmitry,
What is your understanding of how the secret prior art works in the legal notion of novelty? Why do you think that the notion — as applied in the case of novelty (and applied through the legal fiction of PHOSITA), is so mysterious if the same legal fiction of PHOSITA turns and applies the related (and admittedly different) legal concept of non-obviousness? Is this difficulty for you one of “because it’s not done that way”…?
The difficulty for me lies in rationalizing a system in which your own secret art supplies motivation (in the legally relevant obviousness sense) for your own future research. This strikes me as very different from “indefinitely extending patent term” within the meaning of Metallizing for an identical invention.
State of the art is state of the art.
From a legal sense, let’s start there.
How’s nonpublic information a part of the state of the art?
How is it a part of the state of the art for novelty?
You do not state that you have a problem with that aspect, so I probably should not presume that you are OK with that aspect of ROW thinking.
I don’t see the Metallizing rule as making secret prior art a part of the state of the art (since it applies to the inventor only), but rather as holding that if inventors elect to keep something as a trade secret, they forfeit patent rights to that invention.
..it is applied THROUGH the mechanism of Prior Art.
Sorry Dmitry, the conversation stuttered as I hit a “Count Filter” limit on posts.
What I meant to clarify was that the PRE-AIA 102/103 regime treated the condition you identify through the Prior Art mechanism.
The extensive (and so announced) revamp of 102/103 did away with that (as witness a plurality of indicators such as removal of direct words, change in the titles of the sections, announced streamlining and, yes, the soliloquy.
Lastly, I am still not sure whether your focus is solely on such secret conditions only for non-obviousness, or if you consistently include novelty in your legal concerns.
I’m troubled for it not based on feelings, but because it’s odd to me to have motivation to modify that potentially comes from one’s own nonpublic work. In research, much of the motivation for new work comes from one’s own prior work. Do we have a better understanding now, with fewer holes? Because the part about the horses is less than clear to me.
First comment caught in Count Filter, but let me add that State of the Art is NOT determined by any real person effect (for the general rule – there are wrinkles of exceptions as I note herein).
You seem to be resting on a real world effect with a reliance on “non-public,” while MY discussion here is on a particular type of secret art: that which has been shared with a government body for the purpose of obtaining patent protection.
Note as well that I fully permit that any of this subset may be removed from consideration at the (timely) request of the submitter.
I do recognize that this caveat DOES introduce a “real person” effect, but such is a bit of an exception to the rule, and is more tied to the Quid Pro Quo (and thus I also recognize that the different Quid Pro Quo deals of different Sovereigns may well provide different views on even when the timing of the patent bargain may be ‘reasonable’ FOR particular real person exceptions).
So outside of the exception of one rightfully withdrawing an item from the Office, the LEGAL effect of art submitted to the Office IS to set the State of the Art — in the US Sovereign, this LEGAL effect is consistent across both Novelty and Non-obviousness. The timing of this effect is the date of submission. Clearly, since a choice of publication is an arbitrary choice (including a possibility for demand of advanced publication), the legal notion accords with filing date rather than publication date. This accord has a long-standing Precedent in the US sovereign.
Now, my views on most anything secret and NOT shared with a patent office does appear to match how you are taking a more general view (although — again — I take a consistent approach of this secrecy applied to Prior Art for both novelty and non-obviousness). As I indicated, you may too be taking a consistent approach, even as your first comment only singled out the legal obvious inquiry rather than both legal obviousness and novelty. I welcome your clarification on that point.
Yep, I wasn’t referring to unpublished patent applications, but rather to “commercially exploited” secret activities within the meaning of Metallizing.
I’m more troubled by it in the context of non-obviosness.
I do not understand why one would (or should) be more troubling in one legal context than in the other legal context.
Not a fan of such selective ‘troubles,’ as such tend to be more feeling based and less law based.
… I recognize that the thread is growing old, and that commentators may have moved on, but there are some significant holes yet to be patched on this topic.
Ah well, I have led the horses to the well (yet again).
On another angle, the whole “motivation” discussion bears some heightened scrutiny.
The actual (and full) term is: “motivation to combine.”
It is not endemic that this is misconstrued as “motivation” of an individual item/element/aspect of an item of prior art in and of itself.
Pick up MANY Office Actions and note that NO rationale is provided for the last two words of the (full) phrase of “motivation to combine.”
Much like the problem of the colloquial use (rather than the legal use) of “obvious,” there is a problem of colloquial use of an abbreviated notion of “motivation.”
This problem is only amplified with hindsight, and adds to the overall Gist that ‘the only valid patent is one that has not appeared before us.’
… pssst, MaxDrei, this is perhaps yet another wrinkle that your snark missed. Perhaps though, you align with the distinction that I present in that motivation is actually meant to be the slightly different concept of “motivation to combine” rather than any inherent motivation that may arise solely out of the benefits of only one of the items being considered in the attempted combination…
Can internal research expertise make one’s own future inventions obvious to try?
No. That sort of “prior art” is explicitly excluded from obviousness consideration under §102(b)(2)(C) (or pre-AIA §103(c)).
I don’t think this is correct. The subsection you cite is a carveout from the “secret patent application” prior art. It begins with “A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if—.”It does not concern Metallizing art.
Metalizing concerns commercialization. You asked about “internal research expertise.” If you meant that phrase to encompass commercialization, then I misunderstood you. I agree that (for better or worse), the Court does not read (b)(2)(C) to save anyone from the implications of Metalizing Engineering.
Yep, I meant commercially exploited internal research expertise within the meaning of Metallizing.
I see one difference still between the proposed amendment and the EPO. At the EPO, the « secret » prior art is limited to EP applications, to which examiners could have access before they are published. That means that an EP examiner could postpone an allowance because he knows that some prior art will surface. That feature contribute to the confidence that the patent Office has a possibility to issue valid patent.
It is nice however that the worldwide secret sales are ruled out of the prior art. At least, the USPTO is no longer required to employ international spies to discover the totality of the prior art and have a decent chance to issue valid patents.
Indeed! The EPO does delay issuing a Notice of Allowance until 18 months have elapsed from the earliest declared priority date, just so it can check the novelty of the claims against the disclosure content of the A (or WO) publication of any EPO filing with an earlier declared priority date.
Incidentally, there is no need for any EPO Examiner to go looking at any unpublished EPO filing. There would be no point anyway: suppose the earlier filer pulls their application, to prevent A publication. And it would not be right either: till the A publication, the content of a patent application ought not to be available to anybody other than the Applicant. What happens at the Patent Office in China, mind you, is another thing entirely. Of that, I have no idea.
And as for “postpone”, that can only happen if the EPO wants to issue a Notice of Allowance earlier than 18 months after the priority date, which in most every case is a bare 6 months after the PCT filing date. How fast do you want the EPO to go, for goodness’ sake?
As to the legal status of State of the Art (and to the legal person of PHOSITA), does the arbitrarily chosen 18 months change anything?
Of course, in a given context of an applicant pulling their material from the process prior to publication, the answer is yes. I suppose in your dominion this operates in a similar manner as it does in ours: preservation of the applicant’s ability to proceed with Trade Secret status as opposed to any actual partaking in a Quid Pro Quo (even as the Quid Pro Quo may well be different depending on the Sovereign’s offered ‘deal’).
HOWEVER — outside of that instance of an applicant pulling their material, there are plenty of wrinkles for that legal person and the state of the art, now isn’t there? For example, whether that legal person may consider any such art indicating a state of the art (in the legal sense) for novelty alone or for novelty and for non-obviousness.
… MaxDrie, care to comment on this “non” wrinkle…?
The real issue here is how do the Europeans define “public.” Public, in US law, used to mean the disclosure of the invention to a single person not subject to a secrecy order. So, for example, providing a copy to any library, regardless of whether it was indexed and findable, would be a public disclosure. Is the European view like that – the standard meaning of the word public – or a term of art, like the current US Fed Cir view?
It’s all there, Random, in the jurisprudence of the Boards of Appeal of the EPO, that has developed over the last 40 years and is all available on the EPO website. In a nutshell, the patentable novelty of a claim is prejudiced when an enabling disclosure of something within the scope of that claim has been “made available” to at least one member of “the public”. Think of those to whom an enabling disclosure has been made available. Are they all bound by some sort of confidentiality, express, implied or implicit? If so, not one of them is a member of “the public”. But if there is one person who is free, in law and equity, to pass on the enabling disclosure to members of the public, then novelty is prejudiced.
Sending a copy to a Library is an interesting situation. Plenty of cases on that, in the EPO case law, each turning on their own specific facts.
Disclosure to business partners is another interesting area. What if the invention is embodied in a catheter and you ask a hospital surgeon to test your prototype. Could that surgeon be a member of “the public”, is your “disclosure” to that surgeon “enabling” and is that surgeon free to show the device to a member of “the public”? Such cases turn on their particular facts but the overall principle is clear: has the cat been let out of the bag?