Novelty & Non- Obviousness as Concepts of Patent

Date : May 26, 2020

The fundamental principle of Patent Law in India is that a patent is always granted for an invention, which is novel, new, non-obvious and useful. Inventive step without novelty is myth.[1]

Novelty and Non - obviousness are the criteria which provides different functions and add to different characteristics of intellectual product. Novelty is needed for a patent claim to be patentable and to rearrange the concept in the intellectual property. The basic aim for novelty and originality is to get preserved just like nonregistered designs.[2] For a patent primary novelty and obviousness is key concept and an invention will not be part of it because invention is not new and its already known to the public, that is why the aim of the novelty requirement under patent laws is to prevent prior art from being patented gain [3] or it has not fallen in public domain or that it does not form part of the state of the art.

An “Invention” is defined as a new product, activity or process involved with an inventive step and which is capable of industrial application and its one of the prerequisites for granting of a patent. Normally patent is related with monopoly over the invention of the party so that others can be stopped  from illegally using of that invention. The legal test behind the concept of novelty is that the invention must be something which possess "Novelty". Novelty is absolute condition which is a reward for the contributors of an invention.

Invention is novel when it is not in a public domain as mentioned sections 2(1) (l) and 2(1) (j) of the Patents Act highlighted a 'New invention' in a following way: 

"Any invention or technology which has not been anticipated by publication in any document or used in the country or elsewhere in the world before the date of filing of patent application with complete specification, i.e., the subject matter.”

In other words an invention is must be new or novel. Presently there is lack of cases which deals with novelty and non obviousness so Indian courts relied on the cases of other major jurisdictions. In India very few cases interpret the word obviousness. The concept for identifying prior publication is very important to observe novelty of a patent which was established in the case of Farbewerke Hoechst Aktiengesellschaft Vormals Meister Lucius v Unichem Laboratories[4]. Two basic feature for patent i.e Novelty and Utility is observed in the case of Lallubhai Chakubhai Jariwala v Chimanlal Chunilal and Co[5]  wherein it was observed that real test for patentability is novelty for patent and it’s essentials. In India the test of novelty is in inclusion with new inventions. Novelty is unused and unknown information which sets competitive advantage in a business field as a “sweet spot” for accessibility of patent.

Initially to prove that novelty exists then the necessary element is that it must fall under state of art. In India prior use of patent is part of prior art. The Indian Patent Act 1970 does not define “state of the art” but through various case laws we can refer that the state of the art means prior art, prior knowledge and prior use all of which would infringe the patentee's claim if carried out and it will have been anticipated. State of art is defined under the English Law it has been defined as an invention which is comprise of all matter i.e. a product, process, information about either, or anything else, which has available to the public at any time before the priority date of invention either by written or oral description or in any other way. Moreover the concept of ‘state of art’ is result of European/English standards of novelty.[6]

The Novelty Test is very important for qualifying expertise in era of patents. This is for subject matter of invention which is based on essential features and comparing this set of features on the objects that are among the prior art.[7] Basically patent law centres round only two concepts one of them is novelty and other one is lack of obviousness. Any invention done by person is considered as art or novel in the light of the Section 2(1) (j), 13, 29, 30, 31, 32, 33, 34 of the Indian patent Act, 1970.

Patent publicly known or considered as prior act is not limited to published documents although it must be part of the common knowledge of public.[8] The novelty and non-obviousness of a patent must be observed and determined through ‘skilled in art’ because a skilled person has experience of the field in question and he must have the necessary information for the same. That is why the concept of ‘Novelty’ formulated as a uniform test for determination of inventive step as well as non-obviousness.

Obviousness consisting of four steps always which was observed in the case of Windsurfing International v Tabur Marine[9] and all these tests have been reiterated by the court in Bishwanth Prasad’s case. These steps are as follows-firstly identification of inventive steps is must in form of prior use, prior art or prior knowledge ; Secondly the difference is needed between known matter and alleged invention by the skilled person; Thirdly consideration is important to create or observe  differences to the aforesaid skilled person to the alleged invention and Fourthly to obtain the invention the degree of invention is needed. So novelty has been accepted by all the authorities as prerequisite of patentability.

In case of M/S Bishwanath Prasad Radhey Shyam Vs. M/S. Hindustan Metal Industries[10], it was held that there must be novelty in application. And also observed in case of Blakey and Co. v. Lathem and Co.[11]  is that to be new in patent only novelty or subject matter can show invention. Recently Delhi High Court observed the criteria of patentability as “Non-obviousness” and “Inventive- step.”  The US Supreme Court regarding the aspects of non-obviousness analysed three factors [12] known as Graham factors. These factors include the scope of the prior art; the differences between the prior art and the claims moreover ordinary skills too.

The concept of inventive step in India laid down by Supreme Court in case of  M/s. Bishwanath Prasad Radhey Shyam Appellant v. M/s. Hindustan Metal Industries [13] as the combination of new result. For patentability all the improvements or the combinations produce a new result/ new article. The U.S. Supreme Court in cases of  Swofford v. B & W, Inc[14] and Graver Tank & Mfg. Co v. Linde Air Prod. Co. [15] observed that utility and novelty both are issues of fact which leads to determine the scope of judicial review in patent litigation.

Ordinary skill is always in pari materia with invention involved. In case of Inc v. Jeffrey Allan Industries[16], it was held that to determine ordinary skill we have to consider the type of problem encountered in the art, and prior art solution of such problems. An application without any inventive step was rejected by patent office.[17] In the case of  Bajaj v TVS[18] court observed that technology entailed in concerned patent is necessary for the closest prior art to understand that invention is obvious or not. IPAB dealt with inventive steps in case of Enercon (India) Ltd.v. Alloys Wobben  which is based on Halbury’s law of England which focuses on the test of inventive step as obvious to the person skilled in the art. All the above criteria stated that in many countries including India[19] the validity of a patent is based on three things  Invention, Novelty and Inventive step.[20]

Author: Rachi Gupta a student of B.B.A. L.L.B. (Hons.), Vivekananda Institute of Professional Studies, GGSIPU intern at IP and Legal Filings and can be reached at support@ipandlegalfilings.com

References:

[1] Natural Remedies Private Limited Bangalore  Vs. Indian Herbs Research & Supply Co & Others Lnind 2011 Kant 871.

[2] Zeki Geven, Novelty and Originality in Terms of Intellectual Property Law, 2 J. Fac. L. Inonu U. 327 (2011).

[3] Legal Research Service for the Boards of Appeal, European Patent Office, Case Law of the Boards of Appeal of the EPO (8th edition, July 2016).

[4] AIR 1969 Bom 255.

[5](1936) ILR 60 BOM 261.

[6]https://www.worldwidejournals.com/global-journal-for-research-analysis GJRA/recent_issues_pdf/2015/May/May_2015_1445945679__80.pdf.

[7] https://ipstyle.net/wp-content/uploads/2018/10/Patents.pdf.

[8] Monsanto v. Corommandal 1986 SCR (1) 120.

[9]  [1985] RPC 59.

[10] AIR 192 SC 1444.

[11] (1889) 6 RPC 184 (CA).

[12] Graham et al. v. John Deere Co. of  Kansas City et al 383 U.S. 1 (1966).

[13] AIR 1982 SC 1444.

[14] 393 U.S. 935 (1968).

[15] 339 U.S. 605 (1950).

[16] 807 F.2d 955, 962, 1 USPQ2d 1196, 1201.

[17] Reckitt & Colman of India Ltd. v. Godrej High care Ltd. (2001) PTC 367.

[18] MANU MIPR 2009 (2) 139.

[19] The Patents Act, 1970, s. 2(j).

[20] Office of the Controller General of Patents, Designs and Trade Marks, ‘The Guidelines for Examination of Computer Related Inventions (CRIs 2017) <http://www.ipindia.nic.in/writereaddata/Portal/Images/pdf/Rvised__Guidelines_for_Examination_of_Computer-related_Inventions_CRI__.pdf> accessed 6 February 2018.