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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