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Novelty in Patenting

To qualify for a patent, an invention must fulfill the following requirements:

bull.jpg (5174 bytes) it must be novel (Novelty)
bull.jpg (5174 bytes) it must involve an inventive step (Inventiveness)
bull.jpg (5174 bytes) it must be useful

In simple terms, an invention will be considered novel if it does not form the state of the art. The invention will not be novel if it has been disclosed to the public in India or anywhere else in the world by a written or oral description or by use or in any other way before the filing date of the patent application. The criterion of knowledge being in public domain is not satisfied on the basis of the inventor’s knowledge alone. The information appearing in magazines, technical journals, books etc, will constitute the prior knowledge. If the invention is already a part of the state of the art, a patent cannot be granted. The material already published in patent documents and also the material of the patent applications having an earlier filing date, but not yet published at the time of filing the new invention, also constitute the state of the art. The obvious question is: how could the material in an unpublished patent application be the same as your invention? Such a situation may arise on three accounts viz.,

the invention was not kept confidential,
the inventor has not kept abreast with developments in the area of interest and
it may be a coincidence that two inventors had hit upon the same thing in succession.

It is essential to keep the invention secret till the date of the filing. In case the invention has been disclosed to someone in confidence, then this disclosure would generally not go against the novelty criterion. Scientists working in universities face a dilemma in this respect as they have a commitment to disseminate new scientific knowledge but at the same time they would like to protect the proprietary interests in their inventions. In order to satisfy the novelty criterion a scientist must file a patent application (even a provisional applications will suffice) before publishing the information in a scientific/technical journal, newspaper, magazine etc.

There are many instances where a patent already granted was revoked by an authorised agency (eg. patent office/a court on account of not meeting the novelty criterion. This would happen when someone protests against a granted patent. It may be remembered that the decisions of the courts in this matter is final like in any other legal dispute. In the context of the material in the unpublished patent applications, it is to be noted that this application, once granted a patent, would be sufficient to disapprove the novelty claimed in a new application, in case the essential features of the claims of the previous patent cover the essential features of the latter invention specified in the claims of the later patent. This may happen during the process of consideration for an award of a patent or even at a later date after the grant of a patent to the new invention.

bull.jpg (5174 bytes) Case of Prout vs. British Gas (1992)

An employee of British Gas had an idea for a vandal proof bracket for fixing warning lamps to barriers placed around excavations in the highway. He submitted his idea to the company through the suggestion scheme. British Gas carried out field trials on the public highway but decided not to proceed with a patent application. The employee then applied for a patent in his own name (British Gas did not object to this). Some time later, British Gas made use of the patent without permission. The employee sued the British Gas for an infringement. The latter argued that the patent was not valid as the invention was known at the time of filing of the patent application. The court held that the prior use was not sufficient to anticipate the patent. Something more than mere trials in public was needed. The patent was declared valid and infringed by British Gas which was also liable for breach of confidence.

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