The process of determination of a novelty of an Invention

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Harvesting Innovation
Process of Determination of Novelty of an
Invention
In order to establish the novelty of an invention, search for
anticipation by previous publication and by prior claim in
relation to the subject matter of the invention for which the
patent has been applied for is conducted by the examiner in
the patent and non-patent literature to ascertain whether the
invention has been anticipated by previous publication and
prior claiming. This is a part of office action by the Patent
Office towards conducting examination of patent applications.
Novelty is determined before inventive step because the
creative contribution of the inventor can be assessed only by
knowing the novel elements of the invention.
An invention defined in a claim lacks novelty if the specified
combinations of features have already been anticipated in a
previous disclosure. In order to demonstrate lack of novelty,
the anticipatory disclosure must be entirely contained within
a single document. If more than one document is cited, each
must stand on its own. The cumulative effect of the
disclosures cannot be taken into consideration nor can the
lack of novelty be established by forming a mosaic of
elements taken from several documents. This may be done
only when arguing obviousness. However, if a cited document
refers to a disclosure in another document in such a way as to
indicate that, that disclosure is intended to be included in that
of the cited document, then the two are read together as
though they were a single document.
The state of the art in the case of an invention is taken to
comprise all matter whether a product, a process or
information about either available in India or elsewhere which
has at any time before the priority date of that invention been
made available to the public by publication of description or
by use in India.
A matter is considered as part of the state of the art on the
date it first becomes available to the public, wherever in the
world that may be, and in whatever manner or language the
disclosure is made. There is no limit on the age of the
disclosure.
Any document is regarded as having been published, and thus
forming part of the state of the art, if it can be inspected as of
right by the public, whether on payment of a fee or not; this
includes, for example, the contents of the ‘open’ part of the
file of a patent application once the application has been
published.
Prior publication does not however depend on the degree of
dissemination. The communication to a single member of the
public without inhibiting fetter is enough to amount to making
available to the public. There is no need even to show that a
member of the public has actually seen the document.
The invention is taken as lacking in novelty if information
about anything falling within its scope has already been
disclosed. Thus, for example, if a claim specifies alternatives
or defines the invention by reference to a range of values (e.g.
of composition, temperature, etc), then the invention is not
new if one of these alternatives, or if a single example falling
within this range, is already known. Thus, a specific example is
sufficient to destroy the novelty of a claim to the same thing
defined generically.
Measuring Inventive Step
 What was the problem which the patented
development addressed?
 How long had that problem existed?
 How significant was the problem seen to be?
 How widely known was the problem and how many
were likely to seeking a solution?
 What prior art would have been likely to be known to
all or most of those who would have been expected
to be involved in finding a solution?
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 What other solutions were put forward in the period
leading up to the publication of the patentee's
development?
 To what extent were there factors which would have
held back the exploitation of the solution even if it
was technically obvious?
 How well had the patentee's development been
received?
 To what extent could it be shown that the whole or
much of the commercial success was due to the
technical merits of the development?
Assessing Inventive Step
In assessing an inventive step, mosaics is permissible, if it is
obvious to do so at the time of filing or priority date of patent
application, to the skilled person in the art. The applicant may,
for example, have presented his invention as a combination of
features A, B, C, and D which he admits as known in
combination, with a further feature E which it would
undoubtedly be inventive to add to the acknowledged
combination. It may be that a prior document discloses the
combination of features A and E, and that the addition of the
remaining features B, C, D is then the most natural way of
completing the disclosure in the prior document and
therefore obvious.
Indicators of Inventive Step
The indicators employed to assess the inventive step include.
 Distance: It is to be decided as to how much is the
distance between the subject-matter of the invention
and the prior-art. If such distance is large,
establishing the inventive step is easier.
 Surprising Effect: The inventive step may be present
if there is a surprising or unexpected effect. However,
if the measures which lead to this effect are near at
hand by themselves, a surprising effect is not
sufficient for granting a patent.
 Long Felt Need: If the claim solves a "long felt need",
there is a presumption that a claim is not obvious as
other inventors might have also tried to solve it but
could not provide the solution to fulfill the need.
 Failure of Others: If other inventors have tried to
solve a problem and were not successful, the claim
will likely involve an inventive.
 Complexity of Work: If the work undertaken by the
inventor in order to produce the invention was
particularly complex, and not readily carried out, that
is an indication that it was not a matter of routine. In
such cases the invention can be non-obvious.
 Commercial Success: Commercial success is
indicative (but not conclusive) of an inventive step.
 Cheaper Product, simplicity of the proposed technical
solution.
 Prior art motivation.
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Authors:
Lokesh V, CEO, Founder, Innomantra Consulting, A Mechanical Engineer
having work experience in product design, Innovation and IPR for 18+ years
.He also has Post-Graduate degrees in Business Administration from
Symbiosis, Pune and Intellectual Property Law Rights from National Law
School of India University. He has lectured at several premium B Schools and T
Schools and has published National & International papers related to
Innovation & Intellectual Property Rights and authored several articles in
journals and magazines. Recently, Lokesh played a role as a mentor and jury
in ‘ Power of Ideas – Initiated by the Economic Times and Indian Institute of
Management –Ahmadabad, India’.
He was also awarded as Winner - India Innovation Challenge 2008 at 4th India
Innovation Summit -2008 Organized by CII & Govt. of Karnataka. He can be
reached at Lokeshv@innomantra.com
E mail : contact@innomantra.com
©2010 Innomantra consulting
November 2010