INTRODUCTON

A patent application is patentable if it meets the requirements of Novelty (newness), Inventive Step, and the capacity to be made or used in industry. Novelty and Inventive Step are interrelated, yet they represent two distinct levels of patentability criteria.

Novelty is a compulsory requirement for a patent to be considered patentable. The main objective for novelty as a requirement is to prevent the patent of things that are publicly known and for the same knowledge to be taken away from public access.

The “invention” is defined in Section 2(1)(j), as a novel product or technique incorporating an inventive step and capable of industrial application.[1] In addition Section 2(1) (j a), “Inventive step” refers to a characteristic of an invention that includes a technological advance above existing knowledge or has economic importance, or both, and that makes the invention not evident to a person versed in the art.[2] 

In this text, well be discussing the differentiating factors between Novelty and Inventive Step and its importance in patentability.

WHAT IS NOVELTY?

Novelty is a essential criteria for patentability. It requires a invention to be patented to be a new and undisclosed one. An invention in considered novel if it has not been revealed/disclosed to the public through any means of communication prior to the filing of the application. Novelty shows the difference between invention and discovery of a subject matter. Novelty as a subject or criteria for patentability serves as a means to only allow or grant inventions that genuinely contribute something new to the relevant and concerned body of knowledge.

In India, Novelty is covered under but not limited to Sections 2(1)(j), and Section 13[3]. An Invention is defined under Section 2(1)(j) as: “Invention means a new product or process involving an inventive step and capable of industrial application. It further states “Inventive Step” means a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art.

Section 13 of the Indian Patent Act, 1970 further state that for a invention to be patented, a prior art search has to be done to ensure that there is no public disclosure of the invention.

For such guidelines and procedures to be maintained and used, the objective for such requirement is to ensure that the invention does not form or consist of a “prior art”. “Prior Art” can be found in various forms of public or published documents (research papers, patents), public use or known processes. An invention cannot be considered novel if it has been already disclosed in any public forum. For ex: If before filing a patent, a researcher publishes a paper dealing with the invention, the invention loses its novelty, making it unpatentable.

Illustrations:

  • A New Drug formation that has never been used or published publicly would be considered NOVEL.
  • A Smartphone Technology that has already been disclosed in a previous patent or has been disclosed to the public previously would NOT QUALIFY AS NOVEL, even if there are slight modifications.

Internationally, in the context of the U.S., novelty is covered under 35 U.S.C. S 102, which prevents granting of patents for inventions that have been previously disclosed before the effective filing date. In the European Union, the European Patent Convention (EPC) addresses novelty under Article 54 stating that an invention must not be part of a “state of the art” to be patentable.

WHAT IS INVENTIVE STEP?

Inventive Step along with Novelty is a Core Requirement for patentability, ensuring that an invention is not only new but also has sufficient degree of inventiveness. For an Invention to qualify as having an inventive step it needs to not be obvious to a person skilled in the relevant field of technology. In other terms, the invention must show a degree of creativity and innovation which would be not too apparent to someone with average knowledge in the field.

Inventive Step is defined under the Indian Patents Act, 1970 in the Section 2(1) (ja) wherein it is stated that a Inventive Step is a feature of an invention which includes a technical advance or improvement upon the existing knowledge and has significant economic standing. The technical advancement or the inventive step must also be “not obvious to a person skilled in the art.” This provision is made to ensure that the invention is not simply a trivial and minimalist improvement upon the existing knowledge. Section 3 of the Indian Patent Act, 1970 also lists exceptions to patentability, including certain inventions that are deemed obvious and hence, not patentable.

To better understand, one must understand the two core factors that are to be considered for a patent to be considered an invention:

  1. Technical Advancement: The Invention must present a significant improvement over the existing technology or knowledge that is in place.
  2. Economic Significance: If the Technical Advancement is nominal but the economic significance of the invention is great or substantial, the Economic Significance makes up for the nominal technological advancement.

If the invention is a mixture or combination of known features and modifications that would be obvious to a person skilled in the art, the invention will not meet the inventive step requirement.

ILLUSTRATION

  • A new Chemical that has higher efficiency and has a lower environmental impact than the existing method might be considered inventive due to its technical advancement.
  • A smartphone with a slightly larger screen or a minor modification not expanding upon its previous versions would likely be deemed obvious and therefore be said to lack an inventive step.

International Comparison: In the U.S., as previously mentioned, the subject matter of Inventive Step also referred to as “non-obviousness” is covered under 35 U.S.C. S 103 and in the EU covered under Article 56 of the European Patent Convention (EPC).

KEY DIFFERENCES BETWEEN NOVELTY AND INVENTIVE STEP

Novelty and Inventive Step are essential but distinct criteria for the patentability of a invention under the Indian Patents Act, 1970. Both of these criteria aim is to ensure the genuineness of inventions but both of the focus on different aspects of the invention.

Nature:

Novelty refers to the newness of an invention. An invention must not have been disclosed to the public before the date of the patent application. It is an objective requirement, meaning that if the invention is found in any prior art or disclosure, it is not considered new and fails the novelty test.

Inventive Step, on the other hand relates to degrees or level of innovation achieved or involved. A Invention may be novel but still fail if it is just a basic extension of a previous technological advancement or invention. The inventive step requires the invention to not be obvious to a person skilled in the relevant field so that patents are granted to inventions showcasing sufficient technical advancements or which hold economic value.

Assessment:

Assessing Novelty is more straightforward than Inventive Step. The patent examiner needs to just check whether the invention is already disclosed in prior art. Assessing inventive step is more subjective and requires an extensive and thorough evaluation of the invention as to prove if the invention goes beyond expected results.

Legal Interpretation:

In the case of Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries (1979), Supreme Court of India distinguished between novelty and inventive step. In the case, the court stated that both requirements must be met for a patent to be granted. The court highlighted that while novelty ensures that the invention is new, inventive step is required to showcase a level of innovation that would not be obvious to someone skilled in the art.

Practical Implication

An invention lacking novelty, will be rejected outright because its already part of the public domain. If the patent lacks an inventive step, even though it is new, it will be deemed obvious and unworthy of patent protection. Novelty and Inventive step are requirements that must be met for a patent to be accepted.

COMMON CHALLENGES IN DIFFERENTIATING NOVELTY AND INVENTIVE STEP

Applicants sometimes struggle to identify originality from inventive step, with them thinking that a fresh innovation or change is equivalent to a inventive step. Novelty dictates or indicates whether a invention is novel and hasn’t been disclosed whereas inventive step dictates whether invention is non-obvious to a person who has knowledge in the field and also includes a technical advancement.

Basically, novelty measures whether an identical invention exists and inventive step measures whether the invention extends the existing knowledge. The difference is often tricky, due to the dynamic nature of technology.

Patent examiners reject applications lacking inventive step because they combine known methods or provide an obvious solution to a problem. Overcoming these arguments is upon the Applicant.

Some tips applicants must consider are:

  • Highlight Technical Innovation
  • Use Specific Evidence to Support Claims
  • Draft Application Thoroughly

WHAT CAN INDIAN JUDICIARY’S SILENCE BE CONSTRUED AS

Introduction to Judicial Silence:

  • Judicial Silence is referring to the situations where courts refrain from explicitly ruling on certain matters due to the nature of the subject involved and the varying and volatile level of meanings that may be construed from the judgement. In Indian patent laws, the Indians occasionally remain silent so as to maintain a status quo system for patents. The matters are mostly left to the Patent Offices or appellate bodies like the Intellectual Property Appellate Board (IPAB).

Implication of Silence:

  • Deference to Patent Authorities: Judicial Silence most of the times are used to signal deference to the expertise of patent authorities in cases where the courts determine that they are a better suited party to handle such a case.
  • Presumption of Existing Interpretation: Courts may practice silence as a means of endorsing or supporting the prevalent interpretation adopted by patent examiners.
  • Gaps in jurisprudence: The Judiciary’s silence also is a sign of gaps in patent law jurisprudence where the courts may prefer to refrain from cases until a Major Case is related or cases where the ambiguity or inconsistent application prompts a need for clarification.  

Impact on Patent Applicants:

  • In cases where the judiciary remains silent, patent applicants may find themselves relying on Patent Office’s guidelines and examiner’s decisions. This reliance leads to inconsistencies in the implementation or execution of patent application depending upon the subject matter of the case. Judicial Silence hence leaves the applicants with little recourse for challenging or refining decisions through a higher level of legal interpretation or backing.

Potential For Future interpretation

  • The Indian Judiciary’s silence on patent matters does not entirely close the door to future legal interpretation. Precedents are created in Landmark cases as well as questions are answered in the Indian Courts.  Landmark cases like Novartis AG v. Union of India (2013)[4] clarified the standing of inventive step in the context of pharmaceutical patents. Cases such as these, show that Judicial Silence is only practiced up to a point and the Judiciary lends their voices to disputes when necessary.

CONCLUSION

Novelty and Inventive Step are crucial requirements or components of patent law. Although these components are closely related, courts defer to patent authorities to assess the technical details. Judicial silence on these issues may leave gaps in jurisprudence, affecting the consistency of decisions. However, landmark cases could spur courts into action to offer more guidance on the ambiguity of law, refining the interpretation of these critical patent requirements.

Author: Keshav Mishra, Symbiosis Law College

REFERENCES

  1. BOOKS
  2. Cornish W & Llewellyn D., Intellectual Property: Patents, Copyright, Trademarks & Allied Rights, Sweet & Maxwell (2010)
  3. Kankanala Kalyan C., Narasani Arun K. and Radhakrishnan Vinita, Indian Patent Law and Practice, Oxford University Press (2010)
  • JOURNALS
  • Katzir, S. (2016). Variations and Combinations: Invention and Development of Quartz Clock Technologies at AT&T. Icon, 22, 78–114. http://www.jstor.org/stable/44242742
  • Cisneros, M. (2008). Inventive Step. In Patentability Requirements for Nanotechnological Inventions: An Approach from the European Patent Convention Perspective (1st ed., pp. 45–48). Nomos Verlagsgesellschaft mbH. http://www.jstor.org/stable/j.ctv941vqm.6
  • Scotchmer, S., & Green, J. (1990). Novelty and Disclosure in Patent Law. The RAND Journal of Economics, 21(1), 131–146. https://doi.org/10.2307/2555499
  • Seymore, S. B. (2011). RETHINKING NOVELTY IN PATENT LAW. Duke Law Journal, 60(4), 919–976. http://www.jstor.org/stable/27896022
  • Lee, L. L. (2008). Trials and TRIPS-ULATIONS: Indian Patent Law and Novartis AG v. Union of India. Berkeley Technology Law Journal, 23(1), 281–313. http://www.jstor.org/stable/24118301

[1] Section 2(1) (j) of the Patent Act of 1970

[2] Section 2(1) (j a) of the Patent Act of 1970

[3] The Indian Patent Act of 1970

[4] 13 S.C.R. 148