International report - Novelty: an Indian perspective 29 Nov 17
LexOrbis - India
The standards for meeting patentability criteria under the Patents Act 1970 are emphasised to reward the contributors of an invention. Among these criteria, novelty is a vital and absolute condition for patentability. An invention is considered ‘novel’ if it is not in the public domain anywhere in the world, and is analysed using existing expertise in the relevant field of technology.
Sections 2(1)(l) and 2(1)(j) of the Patents Act highlight the difference between a new invention and an invention. A ‘new invention’ is defined as:
“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 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 or process involving an inventive step and capable of industrial application”. One of the prerequisites for granting a patent for an invention is that the invention must be new or novel. Novelty should always be ascertained with reference to a single prior art reference and various documents cannot be combined; every element of the alleged claim should be disclosed in the prior art for novelty destroying.
Practice and interpretation
Lack of novelty is usually referred to as ‘anticipation’ and is determined by factors such as prior publication, public knowledge and public use, commercialised products and selection inventions. While anticipation is not expressly defined in the Patent Act, Sections 29 to 34 identify what anticipation is not.
When testing for anticipation, if a prior art exists (ie, if the prior art describes something falling within the scope of an alleged claim) then, if by studying the prior art the claimed invention can be performed, the claim would be considered to be anticipated. It may be unnecessary to repeat the prior art test, but expert opinion may be considered in order to identify anticipation better using relevant expertise. It can also be identified by showing the predictable result as the outcome of what is described in the prior art, regardless of whether it would be a product or process falling within the scope of the claim.
In India, a patent application is considered to be anticipated if the invention is disclosed in a patent or any other document which is published before the priority date of the application. However, if the inventor proves that the matter published was obtained fraudulently and was published without his or her consent, then it may not be considered to be anticipated. The concept for identifying prior publication was established in Farbewerke Hoechst Aktiengesellschaft Vormals Meister Lucius v Unichem Laboratories, wherein the court held as follows:
“to anticipate a patent, a prior publication or activity must contain the whole of the invention impugned; i.e., all the features by which the particular claim attacked is limited. In other words, the anticipation must be such as to describe, or be an infringement of the claim attacked."
Likewise, in Lallubhai Chakubhai Jariwala v Chimanlal Chunilal and Co the court observed that:
“the two features necessary to the validity of a patent are novelty and utility, but the real test is the novelty of the invention. Novelty is essential, for otherwise there would be no benefit given to the public and consequently no consideration moving from the patentee [while interpreting the factor related to public knowledge and public use.]”
The court further held as follows:
“The next question is, whether the plaintiff's invention has been anticipated by prior public user. Has it been publicly used by the plaintiff and/or by others before the date of the application? Public user does not mean a user or exercise of the invention by the public, but a user or exercise in a public manner; and it is in every case a question of fact. If the invention is being put into practice before and at the date of the grant, the grant will not be for a new invention or manufacture, and this applies equally whether the invention is being practised by the patentee himself or by others. A use of the invention for the purposes of trade may constitute a prior user which invalidates the patent, and it has been held that the prior public sale of goods or articles treated according to the invention is a public user of the invention, for the sale is strong evidence that the user was really commercial and not experimental.”
In case of a prior disclosure by the inventor, the Patents Act provides a one-year grace period for filing a patent application if the invention has been described in front of a learned society or published during the transactions of such learned society. The grace period is also available for conducting reasonable trials such as data generation for regulatory approval; it is not available where an invention is being sold or commercially worked in India. However, any use or publication of an invention after filing a provisional patent application in India will not be considered anticipation. Similarly, the grounds relating to public display (Sections 31(a), 31(b) and 31(c)), public working (Section 32) and traditional knowledge (Section 3(p)) are major considerations when determining novelty. An invention can also be anticipated by knowledge, either oral or in any other form existing in a local or indigenous community in India or elsewhere.
The general factors considered for anticipation assessment may be relevant in selection invention cases. In selection inventions, the selection of specific dimensions, ranges of values or parameters within (prior) larger areas based on new characteristics and unknown properties are considered to be invention. While the Indian Patent Office (IPO) does not expressly state that selection patents are unpatentable in India, a combined reading of Sections 3(d) and 2(1)(ja) appear to have a strict standard regarding patentability of selection invention.
In India, with the inclusion of a definition for new inventions, the test for anticipation now considers absolute novelty. The scope of prior art has widened under the Patents Act because, apart from prior publication worldwide and prior use in India, even prior use outside India forms part of the prior art; and traditional ‘ancient’ knowledge in India also constitutes prior art. Interpretations are decided on a case-by-case basis and India is witnessing a substantial increase in patent enforcement activities. It will be interesting to see how cases will be determined at the IPO in view of the rapidly developing technological environment.
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