This document provides an overview of determining novelty, inventiveness, and utility for patent applications in India. It discusses that an invention must be novel by not being anticipated by prior art, inventive by not being obvious to someone skilled in the art, and industrially applicable. It describes searching databases and classifications to examine prior art, and provides examples of assessing novelty and inventive step. The key aspects of determining if an invention is patentable in India are assessing what was previously known and if the invention involves an inventive conceptual leap.

1. DETERMINING NOVELITY,
INVENTIVENESS AND UTILITY OF
INVENTIONS (CASE STUDIES)
SARFARAZ UR REHMAN
EXAMINER OF PATENTS AND DESINGS
PATENT OFFICE- DELHI
IPO Building Sector 14,
Dwarka New Delhi 110 075
Department of Industrial Policy& Promotion,
M/o commerce & Industry,
GOVERNMENT OF INDIA

2. Patent Grant Procedure
Patent Grant Procedure
Filing of patent application on a date(PCT/Convention/Ordinary)
(Known as Priority Date)
Early Publication Publication after 18 months
Opposition By Third Party
Representation (Pre Grant Opposition)
Request for examination
Examination: Grant or Refusal
Publication of Grant of patent
Opposition to the patent
(Post Grant Opposition)
Decision By Controller

3. What is an Invention ?????????
Section 2(1)j of Indian Patent Act states that :
an invention means:
• a new product or process (novelty),
• - involves an inventive step ( non-obviousness),
and
• - capable of industrial application (utility)

4. Novelty
• The subject matter of an invention is novel if it has
not been disclosed in the prior art, before the
'priority date'
• Prior art may include everything that has been
published, presented or otherwise disclosed to the
public before the date of priority of the patent
application
• Prior art includes documents related to patents,
research papers, articles in magazines and any other
documents in any language disclosed in any form
any where in the world.

5. Novelty
• The subject matter of an invention will not be
novel if it has been anticipated having regard
to the knowledge, oral or otherwise available
within any local or indigenous community in
India or elsewhere in the world.
• Novelty is always determined before
inventive step because the creative
contribution of the inventor can only be
assessed by knowing the novel elements of the
subject matter of the invention.

6. Novelty- Prior Use
• Public use means use of the invention in a public
manner and not secretly.
• Use for reasonable trial or experiment is permitted,
if secrecy is maintained
• An inventor may ask his few friends for advice or
have the assistance of experts while maintaining
confidentially of the invention but will not publish,
exhibit or market the things to the public
• Prior sale of the article to a purchaser who is free to
sell it to any body or show it to all, and also,
sending the article as samples or gifts to potential
customers kills novelty

7. Inventive Step (non-obviousness)
• As per section 2(1)ja of the Indian patent act
• Inventive step is a feature of an invention that involves
technical advancement as compared to the existing
knowledge or involve an economic significance or both
and that makes the invention not obvious to a person
skilled in art.
• The invention shall not be considered to involve an
inventive step, if, having regard to the state of the art by
way of published document(s) or otherwise, relating to the
same/similar problem-solution, it is obvious to a person
skilled in the art on the date of priority.

8. Novelty Search
• Examination of Novelty & Inventive step
requires Documentary search for assessment
of Prior Art
• For Novelty, all the features from the
independent claim should be described in a
single document
• The Novelty Search includes searching of the
following documents:

9. Novelty Search contd.
i) [s.13(1)a- Prior Publication]
Indian patent specifications published before the date of
filing but on or after 01.01.1912
ii) (S. 13(1) (b) – (Prior claiming)
Indian patent specifications which are filed before the
date of filing or claming a priority date earlier to the
said date, but publication of that document was
effected on or after the filing date
iii) (S. 13(2) – Prior publication)
Any publication in India or elsewhere in any document
other than Indian Patent Specifications as
mentioned above including traditional knowledge in
any form

10. Method of
Determining Novelty
• Prior Art Searches:
• 1) Reading full patent document
• 2) Understanding the concept of the invention
• 3) Preparing a structured search (choosing
• keywords, identifying synonyms, IPC/ECLA
classifications to search)
• 4) Searching for published documents of the
• same inventor(s) or same applicant(s)
• 5) Searching internet and databases

11. Searching Databases
Free Access
www.uspto.gov (US Patent Office)
www.ep.espacenet.com (EP Patent Office)
WIPO IPDL
Surf IP
Trilateral Databases
Paid Access : Commercial Databases
Derwent **
STN
Delphion
Micropat
Primer Bank
Non Patent Literature (Web of Science, Science
Direct)

12. International Patent Classification
The International Patent Classification (IPC) is a
hierarchical system dividing gamut of the whole
area of technology into a range of sections,
classes, subclasses, groups and subgroups. This
system is used by Patent Offices to classify and
retrieve patent documents for establishing the
novelty of an invention or determining the state of
the art in a particular area of technology.

13. International Patent Classification
SECTION A – HUMAN NECESSITIES
SECTION B – PERFORMING OPERATIONS; TRANSPORTING
SECTION C – CHEMISTRY; METALLURGY
SECTION D – TEXTILES; PAPER
SECTION E – FIXED CONSTRUCTIONS
SECTION F – MECHANICAL ENGINEERING; LIGHTING;
HEATING; WEAPONS; BLASTING
SECTION G – PHYSICS
SECTION H – ELECTRICITY

14. International Patent Classification
A
Section
01 B 1/00
or
Main Group
Class 1/24 Subgroup
Subclass
Group
A complete classification symbol comprises the combined symbols
representing the section, class, subclass and main group or subgroup.

15. WIPO Patent Search

16. WIPO Patent Search – Result

17. USPTO Patent Search

18. USPTO Patent Search-Result

19. Prior Art Searches: Methods
of Determining Novelty
• Determining Novelty:
• The relevant documents are then read
carefully, taking into account the claims
of the application being searched.
• When all technical features of a claim
are disclosed in one of these
documents, it can be stated that said
claim is not new.

20. NO ANTICIPATION
NO ANTICIPATION, IF THE INVENTION IS:
• Published in a specification filed in pursuance of
application for a patent made in India and dated before 1-1-
1912 or
• Obtained from the applicant and published without his
consent or
• Communicated to the Government for investigation
purpose or
• A) Displayed / exhibited /used with the consent of inventor
at an industrial or other exhibition, notified by Government
and/or published as a consequence thereof or
• B) RESEARCH PAPER on invention read by the inventor
before a learned society and/ or published with the
consent of the inventor in transactions of such society

21. NO ANTICIPATION Contd.
And
THE APPLICATION FOR PATENT IS FILED WITHIN Twelve
MONTHS FROM SUCH DISPLAY/ EXHIBITION/ READING/
PUBLICATION
• Prior Use-
• IF PUBLICLY WORKED IN INDIA ONLY FOR THE
REASONABLE TRIAL WHICH WAS REASONABLY
NECESSARY AND
• APPLICATION FOR PATENT IS FILED WITHIN ONE
YEAR FROM THE DATE OF SUCH TRIAL
• Used/published in India or elsewhere after filing
Provisional /Conventional Application

22. Novelty - an example
The Prior Art –
what was known
The Invention
Novelty-- Yes
Inventive Step –????

23. Inventive Step
• It is not enough that the invention is novel i.e.,
difference exists over the state of art, but that this
difference must be substantial and significant
• For constituting an Inventive Step, Prior Art as a whole
is to be considered.
Thus, the subject matter is compared with combination
of publications or other disclosures, unlike in novelty

24. Inventive Step
• When the invention is just an automatic or
obvious extension of Prior Art, the invention
lacks in inventive step.
• To judge the inventive step, the question to be
answered is-
“ Would a person with ordinary skills in the art
have thought of the alleged invention?
• If the answer is No, then the invention is non-
obvious
• The question -“ Is there an inventive step ?”
arises only if there is novelty

25. Determining Inventive Step
ƒ When prior art is incomplete and the invention lies in
“Filling the gap”, which would naturally or readily occur
to the skilled person.
For example- The invention is a building structure made
from Aluminum.The prior art discloses such a structure of
light weight material but does not mention Aluminum
ƒ When invention lies only in providing equivalents
(mechanical, electrical or chemical) to the known art:
For example- Use of hydraulic motor instead of electric motor
in a pump
No Inventive Step

26. Determining inventive step
• The following may be considered
(a) Scope and content of the prior art to which the
invention pertains
(b) Assessing the technical result (or effect) and economic
value achieved by the claimed invention
(c) Differences between the relevant prior art and the
claimed invention
(d) Defining the technical problem to be solved as the
object of the invention to achieve the result
(e) Final determination of non-obviousness, which is made
by deciding whether a person of ordinary skill could
bridge the differences between the relevant prior art and
the claims at issue.

27. Inventive step- an example 1
The above invention can become obvious (lacking inventive
step) if it is known in the prior art that a kind of walking stick
that incorporates a feature which enables it to be segmented
for easy transportation and to be re-assembled whenever it is
to be used for its actual purpose is existing.
In both the cases the technical effect is the same – easiness
of transportation.

28. Determination of Inventive Step : Example 2
(Prior Art)

29. Determination of Inventive Step : Example 2
(Subject Application – Lacks Inventive Step)

30. Determination of Inventive Step : Example 3
(Prior Art)
[Reference 1]
Advertisement Server
• Push Ads to screen saver
in user computer

31. Determination of Inventive Step : Example 3
(Prior Art)
• [Reference 2]
•
• Advertisement Server
•
Select Ad
•
Pay reward
•
•
•

32. Determination of Inventive Step : Example 3
(Subject Application – Lacks Inventive Step)
•
• 1. Push Ads to screen saver
in user computer
• Advertisement Server
• 2. Count exposure to Ad
• 3. Pay reward
•
•
•

33. Industrial applicability
• It is considered that an invention is
industrially applicable when it’s object
can be produced or used in any kind of
industry or in agriculture

34. Industrial Applicability
• If the subject matter of an invention is devoid of industrial
application it does not satisfy the requirement of invention.
• Industrial application of the invention is to be judged by
the reference to the state of art as on the priority date of the
patent application.
• If the invention was then industrially applicable, the fact
that subsequent improvement have replaced the patented
invention to render it obsolete and commercially of no
value, does not invalidate the patent.
• Speculation or imaginary industrial applications are not
considered to satisfy the industrial application requirement.

35. THANKS
Questions