What is Novelty: An Indian Point of View | HavingIP

One of the main requirements to get a patent anywhere is to pass novelty test. According to a study, during the first examination, most of the applications are rejected for failing the novelty test.

However, this is not a dead-end and you get many chances to respond to the patent office. In this article, we will cover all about novelty that you need to know.

Novelty refers to the “newness over what is already known to the public”. To assess the novelty of the invention, a novelty search is conducted to look for prior art before priority date/ filing date of the patent application. If there exists no prior art, invention passes novelty test. 

The next question arises,

Why is Novelty An Important Requirement for Obtaining a Patent? 

To answer this question, you should know that the patent is given to the inventor for a limited period of time in exchange for his contribution to innovation and knowledge pool which ultimately helps society.

Further, the patent benefits the inventor by giving him an opportunity to recover his investment of time & money. (i.e. patent is simply a quid pro quo tool). 

Once the patent is awarded to the inventor, it gives him a monopoly over his invention.

As a result, the inventor can stop anyone from using, making, selling, or importing his patented invention. Therefore, it makes no sense at all to award a monopoly to someone for something that is already available in the public domain for free.

The patent may not even make you money but you can certainly stop others from making money through your patented invention. This way, patent behaves as negative rights. 

If you are wondering, what is a negative right or how patent rights behave as negative rights, you should check out our article written to address these very questions: Why Is Patent A Negative Right

Considering the discussion above, from the government’s point of view, it becomes necessary to check whether the invention in question fulfills the requirement of novelty before granting a patent for it. 

General Concepts Related to Novelty in India

1. An invention is considered novel if it has not been anticipated by prior use or prior public knowledge in India.

2. A prior art is considered as anticipating novelty if all the features of the invention under examination are present in the cited prior art document.

3. The prior art should disclose the invention either in an explicit or implicit manner. Combining prior art documents is not allowed in the determination of novelty.

4. A generic disclosure in the prior art may not necessarily take away the novelty of a specific disclosure. For instance, a four-wheeler may not take away the novelty of a car. 

5. A specific disclosure in the prior art takes away the novelty of a generic disclosure. For instance, a car takes away the novelty of a four-wheeler. 

It is obvious by now that prior art is subject to a cut-off date. The cut-off date to search prior art varies from country to country.

In India, the prior art for novelty or inventive step is searched by taking priority date as the cut off date. 

It means that if you have not filed a patent application for your invention then you should not disclose your invention to anyone without signing an NDA or Non-Disclosure-Agreement. Although there are exemption uncertain cases in which you get a grace period of 12 months to file your patent application after the disclosure of your invention to the public. We will see about it later in the article

To understand the Indian Point of view on Novelty or New Invention or Newness, we should look at the relevant provisions of Indian Law. Upon looking, we find that Sections 2(1)(j), 2(1)(l), 13, 18, 29, 30, 31, 32, 33 & 34 of the Indian Patent Act, 1970 are relevant to the concept of Novelty. 

The Sections mentioned above help in understanding novelty to get a clear idea of the Indian view on Novelty. 

Note: We are covering these Sections from the point of view of Novelty. If you want to explore these Sections in detail, you can do so by accessing Indian Patent Act from here. 

Sections of Patent Act That Are Relevant To The Novelty

Section 2(1)(j)

Section 2(1)(j) defines what is an “invention” as per Indian Law.

It states: “invention”  means a new product or process involving an inventive step and capable of industrial application.  

As you may have noticed, the invention has to be new or novel. But then the question arises what is a new invention (‘new product or process’)?

We need to look no further as it has been answered in Section 2(1)(l) of the Indian Patent Act, 1970. 

Section 2(1)(l)

Section 2(1)(l) of the Indian Patent Act, 1970 defines “new invention” i.e. novel invention as per Indian Law.

It states that “new invention” means 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.

It may occur to your mind that what is this term called ‘anticipation’ used in section 2(1)(l) above.

Well, if all the features of the invention is disclosed by a prior art, the invention is considered to be not new or novel. In such a case, the invention can be considered to be ‘anticipated‘ by the prior art subject to the provisions (Sections 29-34) of the Indian Patent Act.

Having said that you should know that the term ‘Anticipation’ has not been defined in Indian Patent Act per se, however, Sections 29-34 of the Indian Patent Act deal with ‘Anticipation’.

These Sections lay down various grounds of whether prior art anticipates the invention or not. 

Section 13

Section 13 of the Indian Patent Act is entitled search for anticipation by previous publication and by prior claim.

Additionally, you should note that this section talks about the ground for anticipation and not the ground for refusal of the application due to said anticipation.

For refusal in case of anticipation, section 18 should be referred which we will discuss after Section 13.  

Section 13(1)

Section 13(1)(a): Anticipation by any published specification filed in pursuance of an application for a patent made in India and dated on or after 01/01/1912.

The date to look for such publication is before the date of filing of the complete specification by the applicant.

Section 13(1)(b): We have taken an example approach in this Section.

For your application A, let the filing date be X for its complete specification (C1). 

For another application B, let the priority date be Y for its complete specification (C2).

Now, let priority date Y be earlier than the filing date X.

In such case, if any claim of C1 is claimed in any claim of C2, it will be anticipation by prior claiming.   

Section 13(2)

Anticipation by documents published before the filing date of the complete specification by the applicant. These documents are other than those mentioned in section 13(1) above. 

Section 18

Section 18 of the Indian Patent Act is entitled Powers of Controllers in cases of anticipation.

Section 18(1)

Section 18(1)(a): In case of anticipation by way of section 13(1)(a) & section 13(2), this section tells the cutoff date from which the Novelty is judged or decided.

So, from what date should we conduct the search to find prior art for novelty for Indian patents?

The answer is ‘priority date’. General idea from Section 18(1)(a), we get is that the novelty search for a claim of the complete specification should be conducted for the documents published before the “priority date” of that claim. 

If your invention is found to be anticipatory u/s 13(1)(a) & 13(2) then your application may be refused unless:

1. The priority date of claims of your specification is not later than the date of publication of the anticipatory document. or
2. You amend your complete specification to the satisfaction of the controller.

Section 18(2)

In case of anticipation by way of section 13(1)(b), a reference to the specification C2 of application B should be inserted in the specification C1 of your application A unless:

1. You prove that the priority date X of the claim of your application A is not later than the priority date Y of the claim of application B, or
2. You amend your complete specification to the satisfaction of the controller.

To understand anticipation from an Indian Point of View, Sections 29-34 of the Indian Patent Act play a vital role.

Sections	What are they about?
Section 29	Anticipation by previous publication
Section 30	Anticipation by previous communication to the government
Section 31	Anticipation by public display
Section 32	Anticipation by public working
Section 33	Anticipation by use and publication after provisional specification
Section 34	No Anticipation if circumstances are only as described in sections 29, 30, 31 and 32

Note: There may be situations when you as an applicant think that cited prior art doesn’t anticipate the invention because of the grounds described in Sections 29-34. In such a case, the onus lies on the applicant i.e you to prove the same. 

We will see anticipation as described in Sections 29-34 quickly in reference to the question “what happens when your invention becomes public by either you or by illegal means” which is answered next.

When Will Use or Disclosure of Your Invention Will Not Act As Prior Art or Anticipate Your Claim

There may be situations when you yourself have to make your invention public. There may also be some unfortunate situations when someone else gets hold of your invention and this may pose problems to your patent application.

For we know that any invention disclosed by way of publication or use before the filing or the priority date of your patent application, as the case may be, may serve as prior art.

Scope of The Claims And Novelty Rejection

We can file an application either as provisional or non-provisional.

The non-provisional application carries the complete specification. The complete specification carries a set of claims. Claims are part of the patent specification which defines the scope of the protection. A claim is a single sentence and consists of multiple elements/ features in it. 

Note: Provisional specification may sometimes contain claims but what is protected in the end are the claims of the complete specification filed in the non-provisional specification.

Broader Claims Vs Narrow Claims

Broad Claims	Narrow Claims
The scope is wider i.e. claims cover most of the aspects of the invention.	The scope is narrow i.e. claims cover a specific aspect of the invention.
It is difficult to work around broad claims without infringing the patent rights.	It is easy to work around narrow claims without infringing your patent rights.
Chances of the infringement are high, thereby maximizing the commercial benefits of the patent owner.	Chances of the infringement are low, which affects the commercial benefits.
It is easy for the examiner to reject broad claims.	It is difficult for the examiner to reject narrow claims.
Specific disclosure may take away the novelty of generic or broad claims. It implies multiple types of specific disclosures may take away the novelty of broad claims, thereby, maximizing the chances of broad claims failing the novelty test. For example, any vehicle, be it a car, truck, bus, etc., can take away the novelty of a four-wheeler vehicle invention.	Generic disclosure can’t take away the novelty of narrow claims. Further, since the scope of claims is already specific, not many disclosures are there to take away the novelty of narrow claims. For example, Not any four-wheeler vehicle can take away the novelty of a car. Only, a car can take away the novelty of a car.

Why broad claims are desirable?

The example in the table above can also explain why would you aim for a broad claim. If you are able to get a claim for a four-wheeler then all types of four-wheelers, be it cars, trucks, buses, etc., would be infringing your claim, thereby maximizing your profit.

Let’s take another example.

Suppose, you came up with a physical keypad for mobile devices and filed a patent application for it. Further, claims and specification were such that they were aiming to cover a keypad and not the physical keypad in particular.

Because of the broad scope, it may happen that you may end up patenting a virtual keypad also without even realizing it, thereby, maximizing your commercial success.

However, it is to be kept in mind that your patent application will have to undergo scrutiny during the examination. And later, once you enter into the infringements, your patent needs to stand its ground in the courts.

Only One Document is Required For Novelty Test

Novelty test is done based on one document/ disclosure. It’s the test of inventive step in which we try to combine multiple documents/ disclosures.

Suppose your claim has 3 elements: A, B & C. Then the examiner would have to cite a relevant document that discloses all three elements to reject your claim for lacking novelty. Otherwise, even if one element is missing in the cited document, your claim would pass the novelty test. 

Since we are talking about prior art, you may be thinking that only patents, research papers, etc. can serve as prior art however that is not so. In fact, to help you understand what can be prior art, we have written a fun article: 8 Crazy Prior Arts That Were Just Awesome

How to Respond to Novelty Rejection? 

There are various ways you can respond to novelty rejection.

1. Contest it: You could argue that the observations of the examiner are not in place and the cited prior art doesn’t actually disclose all of the features of your claim, Or, 
2. Amend it: you could respond by amending your claim as per the provisions of the law to overcome novelty rejection.
   • Remember that a broad claim is easy to get rejected for lacking novelty. Therefore, you could narrow down the scope of your claim a little depending on the document cited by the examiner and the essential features of the inventions,
   • After narrowing down your claim, you could argue that your amended claim is novel and its all features are not disclosed in the cited document/ disclosure.

Once you respond to objections from first examination report (FER), the examiner again may conduct a search in the next examination stage. 

If the search is conducted again, the examiner may or may not come up with prior art that could disclose all the features/ elements of the amended claim. 

If this found prior-art doesn’t disclose all the features of your claim then your claim would pass the novelty test.

Otherwise, again, you may have to respond to the novelty objection raised by the examiner in second stage of the examination. 

As we have discussed earlier, you can respond to the novelty objection either by contesting it or by amending it.

When is Novelty Search Conducted?

In the lifetime of a patent application, a novelty search is conducted twice:

1. Once by the patent examiner: as novelty is one of the patentability requirements, the motivation to conduct the novelty search is clear for the examiner; and

2. Another one by the applicant: to answer why the applicant conducts a novelty search, we will again have to go back to the concept of a broader/ generic claim.

As it is evident that protection for a broader claim is desirable, however, it is tough to defend a broader claim during the examination.

Therefore, we conduct the novelty search to find out, how broad should the scope of our claim be so that it can be defended during the examination. 

The novelty search helps us identify what is already disclosed in the prior art and what are the gaps in the art.

By leveraging this knowledge, we can draft a claim that is broad enough to cover multiple aspects of the invention but not too broad that it can’t be defended during the examination.

Basically, to ensure that your invention covers all aspects known to you and unknown to you, you need to conduct a novelty search to understand what has already happened and what is currently happening in technologies around your invention. Then only you can draft a strong patent that might fetch you a huge value.

Getting a patent is generally a costly affair, therefore, you as an applicant want to be sure whether the invention is worth spending resources. Because pursuing an invention that is not even novel, is a waste of time, money, and energy.