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Harvesting InnovationProcess 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 thepatent 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 th

date it first becomes available to the public, wherever in th

world that may be, and in whatever manner or language th

disclosure is made. There is no limit on the age of th

disclosure.

Any document is regarded as having been published, and thu

forming part of the state of the art, if it can be inspected as o

right by the public, whether on payment of a fee or not; th

includes, for example, the contents of the open part of thfile of a patent application once the application has bee

published.

Prior publication does not however depend on the degree o

dissemination. The communication to a single member of th

public without inhibiting fetter is enough to amount to makin

available to the public. There is no need even to show that

member of the public has actually seen the document.

The invention is taken as lacking in novelty if informatio

about anything falling within its scope has already bee

disclosed. Thus, for example, if a claim specifies alternative

or defines the invention by reference to a range of values (e.

of composition, temperature, etc), then the invention is no

new if one of these alternatives, or if a single example fallin

within this range, is already known. Thus, a specific example

sufficient to destroy the novelty of a claim to the same thin

defined generically.

Measuring Inventive Step

What was the problem which the patentedevelopment addressed?

How long had that problem existed? How significant was the problem seen to be? How widely known was the problem and how man

were likely to seeking a solution?

What prior art would have been likely to be known tall or most of those who would have been expecte

to be involved in finding a solution?

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What other solutions were put forward in the periodleading up to the publication of the patentee's

development?

To what extent were there factors which would haveheld back the exploitation of the solution even if it

was technically obvious?

How well had the patentee's development beenreceived?

To what extent could it be shown that the whole ormuch 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 thedistance 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 presentif 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 tosolve a problem and were not successful, the claim

will likely involve an inventive.

Complexity of Work: If the work undertaken by thinventor in order to produce the invention wa

particularly complex, and not readily carried out, tha

is an indication that it was not a matter of routine.

such cases the invention can be non-obvious.

Commercial Success: Commercial success indicative (but not conclusive) of an inventive step.

Cheaper Product, simplicity of the proposed technicsolution.

Prior art motivation.

_______________________________________

Authors:

Lokesh V , CEO, Founder, Innomantra Consulting, A Mechanical Engin

having work experience in product design, Innovation and IPR for 18+ yea.He also has Post-Graduate degrees in Business Administration fro

Symbiosis, Pune and Intellectual Property Law Rights from National La

School of India University. He has lectured at several premium B Schools and

Schools and has published National & International papers related

Innovation & Intellectual Property Rights and authored several articles

journals and magazines. Recently, Lokesh played a role as a mentor and ju

in Power of Ideas Initiated by the Economic Times and Indian Institute

ManagementAhmadabad, India.

He was also awarded as Winner - India Innovation Challenge 2008 at 4th Ind

Innovation Summit -2008 Organized by CII & Govt. of Karnataka. He can b

reached at Lokeshv@innomantra.com

E mail :contact@innomantra.com

2010 Innomantra consulting

November 2010

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