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This article is written by Samyak Lunia from Bennett University and the article is edited by Khushi Sharma (Trainee Associate, Blog iPleaders).

Abstract

“A Patent is not a license to make money, it is a license to prevent others from making money”- Kalyan C. Kankanala. Novelty is used as a principle to find whether the invention which has been brought for being patented is new. The researcher has begun with the introduction and has further divided the article into three chapters.

The researcher in the first chapter has discussed “novelty as criteria of patentability in India” wherein he has talked in brief about the three tests and has discussed the concept of novelty in India in brief. Further in chapter two has discussed “novelty as criteria of patentability in U.K. & U.S.” wherein he has talked in brief about the concept of novelty in U.K. & U.S.”. Continuing further researcher in chapter three as discussed “similarities and dissimilarities in the patent system of INDIA, U.K., & U.S.” wherein he has talked in brief about how the patent system function in these countries in the form of similarities and dissimilarities between them. The researcher in the end has concluded the article.

Introduction

In general, a patent is a negative right that gives the patent owner an exclusive commercial use option. However, the patent does not include permission to use or commercialize the invention. Sales approval will be granted separately. Therefore, patents are a legal means of creating a monopoly for a period of time and limiting competition. The monopoly restriction period aims to provide an incentive for the inventor and at the same time to properly weigh the rights of individuals and the rights of society. It should be noted that patents are being contested to create incentives for innovation and secure the necessary investment in production, marketing, and R & D. Despite this opposition, patent law as part of the traditional IPR system has strong domestic roots and is compliant with various national laws. 

Novelty and industrial applicability are the basic criteria for determining the patentability of a subject. Novelty shows the difference between invention and discovery. In the US this distinction can be seen from decades in the form of “product of nature doctrine” and other similar rhetoric elsewhere. 

The patent which is granted to living matter is commonly known as “bio-patents”. Living matter can be patented to different extents in different countries. However, the traditional standards of novelty and non-obviousness also apply to living matter, so new life patents are based on differences in the properties and uses of new life and known substances. Whether it is possible to obtain a patent simply by isolating microorganisms and genes from the natural environment also varies from country to country.

For example, in the United States, a “purified and isolated” compound is considered a patentable subject if the application meets the legal standards of patentability. However, gene patents cover purified and isolated genes, but not naturally occurring genes. However, in the European Union, “biological materials isolated from the natural environment or produced by technical processes may be the subject of the invention, even if they were previously generated in nature.” This is clearly a delicate and often controversial issue, which is the standard for granting patents on living things.

Novelty as criteria of patentability in India

In India as per Patent Act, 1970 a product cannot be patented merely on the ground of a new form being formed of a known substance or on the ground that new use has been discovered of a know substance. India is one of the member countries that has signed the TRIPS Agreement and is a party to this Agreement they have enumerated “Patentable Subject Matter” within its domestic legislation under Article 27 of this Agreement which says that patent will be granted for any invention in all the technology field, whether product or processes and a proviso has been added to it which says that the invention must be novel, have an inventive step, and industrial application must be fulfilled. So, in India, these are the three requirements or tests which need to be passed in order to qualify an invention as an invention. 

The term patent means the right granted to a person who invents or discovers a composition of a new and useful process, article, product, or substance, or a new and useful improvement thereof. The purpose behind introducing patent law is to facilitate new technologies, scientific research, and industrial processes. If an inventive step improves a product significantly, it is called an invention. As per Patent Act, 1970, patents are granted not only for “new inventions” but also for “inventions” which shows an inventive step in an invention.

It is always said that we should distinguish between invention and discovery. However, there are principles under the patent law that says that mere discoveries or new ideas do not make a product new and inventive and hence they can’t be patentable. On the other hand, it is said that a product will be patentable if those discoveries have technical contributions or technical aspects.

It is a well-known fact that mere ideas do not provide patent protection. The principles of patent law state that ideas and discoveries cannot be so patented. It does not form part of state-of-the-art technology or technique. Only the practical application of ideas and discoveries leads to patentability. As is often the case, the actual application of the discovery, if any, is patentable. The ability to use discoveries and ideas to convey how they can be used meaningfully can lead to patentable inventions. The concept of rocks in Ramayana is just an idea explained by a sacred epic. The actual use of it does not lead to the exclusion under section 3 of the Patent Act.

Lack of novelty is commonly referred to as “anticipation” and is determined by factors such as previous publications, commercialized products, published names and usages, and selected inventions. The term anticipation is not defined under the Patent Act but there are sections (S. 29 to 34) under Patent Act that helps us in identifying what anticipation is not. If the prior art is present in the anticipation test, then the claim is made if the prior art research permits the use of the claimed invention. Prior art testing may not need to be repeated, but expert opinion may be considered to better identify expectations using appropriate expertise. Predictable results can also be identified by what is shown as a result of what is described in the prior art, whether it is a product or method within the claims.

In India, while looking into the matter of whether the patent application is anticipated or not, the authority will look at whether that invention which has been brought before them are disclosed in a patent or they will look whether prior to applying any other document is published or not. If it satisfies that it was present, then the patent will not be granted otherwise it will. The inventor who is seeking for patent as one right which he can use when the publication related invention is published without his consent and he was able to prove the same, then in such case it cannot be said that the application is anticipated. We can refer to the judgement given in Lallubhai case, and we can see that novelty is one of the important criteria in determining the patent eligibility as it is unknown and unused information that gives a competitive advantage to the inventor.

In the case of prior disclosure by the inventor, the Patent Act provides a one-year grace period for patent applications if the invention is described in front of an association of experts or published in the business of such an association of experts. The grace period can also be used to conduct appropriate investigations, such as for data for regulatory approval. Not available if the invention is commercially sold or processed in India.

However, the use or publication of the invention after filing a provisional patent application in India is not considered anticipatory. The following ground will be considered as major consideration while determining novelty such as public working, public display, and traditional knowledge which are defined under Section 32, Section 31, and section 3 (p) respectively. Inventions, whether verbal or not, can also be expected through knowledge in local or indigenous communities in India or elsewhere.

Novelty as criteria of patentability in U.S. & U.K.

In U.S. the requirement for novelty means that something like that cannot be found (exactly) with the latest technology. The most harmful state-of-the-art technology often comes from the inventor or the owner himself. This can happen inadvertently as suggestions and presentations that are considered available only to a limited audience are published online by various host organizations. In the United States, there is a one-year grace period after publication by the inventor, during which patents can be applied for. One year later, even if this disclosure is made by the inventor, the public disclosure may be used to reject novelty or obviousness. In most countries, there is no grace period and publications are state-of-the-art from the date of publication.

In Graham v. John Deere Co. case, the US Supreme Court established certain factors to consider when determining whether an invention is obvious such as the scope and content of the prior art, the difference between the prior art and the disputed claims, and the level of the average person skilled in the related technology. The case also held that courts may also use secondary considerations for determining whether an invention is obvious by looking into the following factors such as long-term but unresolved needs, commercial success, long-term but unresolved needs, and the inability of others to resolve the issue.

In the U.K., patents cannot be granted for inventions that are not new. In the UK and most other countries, there are fairly stringent criteria for assessing novelty. Any disclosure, whether in writing or not, anywhere in the world, if the disclosure is made before the priority date of the application, may be harmful to the patent application. Prior disclosure can destroy a patent application, so it is important to keep the invention confidential until the application is filed. However, this is not all. The invention may appear to be disclosed, but in reality, it can be patented.

Similarities and dissimilarities in the patent system of india, U.K., & U.S.

The Indian, US, and UK patent systems appear to be essentially similar in a way that they give all inventors specific rights for a specific period of time in exchange for disclosure of the method of the invention. In addition, the approach to patentability in these three countries plays an important role in facilitating innovation, and it varies slightly from region to region but is fundamentally similar. However, this does not give a complete picture of international patentability. Well-known scholars claim that the European patent system is about the same as the US patent system, but I think there is a big difference between the two patent systems. 

So, when we compare and analyse the English patent law and the patent law of the signatories of the European Patent Convention, we can see that the substantive patent law of these countries remains the same, but there is a difference in the patent law when we see legal traditions and procedural law of those countries. We can see the difference in the patent law of these two countries in one of the famous cases of patent law which is Remington v the Improver, where British and German courts have been shown to be different in terms of infringement.

The test of evidence that a British court considers when deciding whether to revoke a patent is a test of probability. However, in the United States, clear and compelling evidence is required to invalidate a granted patent. The UK courts have some disclosure requirements between the comprehensive and strict US disclosure requirements and the European approach, which does not require disclosure unless specifically required. Therefore, the UK Disclosure Rules are to disclose the document you are calling and the document that harms your case or the case of another party or supports the case of another party.

Other similarities and dissimilarities can be seen from the point of who will get a patent for their invention first. U.K. and India follow the similar method where the patent is granted to the person who has first filed for it that means a first-to-file system, whereas the same is not the case in the U.S. where the patent is granted to the person who has first invented it that means first-to-invent system and under this if they two people are claiming for the same invention, then in such USPTO will decide the matter and see who has the first idea for the invention. 

Other similarities and dissimilarities can be seen from the point of the grace period. India and the U.S. follow the grace period policy, which is of 12 months or 1 year, whereas the same is not followed by the U.K.

The main differences between the U.S., U.K., and Indian patent systems are related to business method patents. Business method patents have been patented in the U.K. or other European countries. Business method patents are granted in the U.S. as long as they are more than just an implementation of a known business process. In India, the business method itself is not patentable, but it can be patented if the new method is aimed at solving technical problems and is systematic in nature. The first-to-file novelty and priority provisions of the India and U.K. are very different from the first-to-file novelty and priority provisions of the U.S. The latter is because it is novelty and priority considering the first date of invention, not the date of first-to-file. This leads to a complex definition of state-of-the-art technology under US patent law. 

Conclusion

To conclude we can see novelty as one of the major competencies which is being looked at while determining whether the particular invention will be patentable or not. We can also see the similarities and dissimilarities in patents which are prevalent and being followed in India, U.S., and U.K. Also, we can see in India that a product cannot be patented merely on the ground of a new form being formed of a known substance or on the ground that new use has been discovered of a known substance. For an invention to be patentable they will have to pass the three tests of patent such as novelty, industrial application, and inventive step.

References

Acts/ Regulations/ Rules Referred

1. Patent Act, 1970

Articles 

1. A comparative analysis of patentability threshold in India, United States and United Kingdom, by Disha Adhikary, Amogh C. & Shweta Mallya.

2. Novelty: An Indian Perspective, by Pankaj Musyuni (18 December 2017).


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