1 | P a g e
Process of Determination of Novelty of an
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 the
patent 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 the
date it first becomes available to the public, wherever in the
world that may be, and in whatever manner or language the
disclosure is made. There is no limit on the age of the
Any document is regarded as having been published, and thus
forming part of the state of the art, if it can be inspected as of
right by the public, whether on payment of a fee or not; this
includes, for example, the contents of the ‘open’ part of the
file of a patent application once the application has been
Prior publication does not however depend on the degree of
dissemination. The communication to a single member of the
public without inhibiting fetter is enough to amount to making
available to the public. There is no need even to show that a
member of the public has actually seen the document.
The invention is taken as lacking in novelty if information
about anything falling within its scope has already been
disclosed. Thus, for example, if a claim specifies alternatives
or defines the invention by reference to a range of values (e.g.
of composition, temperature, etc), then the invention is not
new if one of these alternatives, or if a single example falling
within this range, is already known. Thus, a specific example is
sufficient to destroy the novelty of a claim to the same thing
Measuring Inventive Step
What was the problem which the patented
How long had that problem existed?
How significant was the problem seen to be?
How widely known was the problem and how many
were likely to seeking a solution?
What prior art would have been likely to be known to
all or most of those who would have been expected
to be involved in finding a solution?
Your Inno-IP magazine November 2010