A DPIIT Recognised Startup

IPR law News

Determining Novelty of the claimed Invention: study of US and Indian Patent system


Novelty an essential condition for patentability: Indian Perspective

The Patents Act of 1970 emphasizes the importance of achieving patentability criteria in order to compensate the inventors who contributed to the creation. Novelty is one of these requirements that must be met in order for a patent to be granted. If an innovation isn’t in the public domain anyplace in the globe, it’s regarded ‘new,’ and it’s evaluated using current expertise in the essential field of technology.

The Patents Act’s sections 2(1)(l) and 2(1)(j) stress the distinction between a new invention and an invention. “A novel product or procedure involving an inventive step and capable of industrial application” is what an “invention” is defined as. One of the requirements for obtaining a patent for an invention is that it be unique or new.Novelty must always be determined with regard to a single prior art reference, and many documents cannot be combined; for novelty purposes, every aspect of the asserted claim must be disclosed in the prior art.

Anticipation is a phrase used to describe a lack of novelty that is determined by elements such as preceding publishing, public knowledge and use, commercialized items, and selection inventions. While the Patent Act does not clearly define anticipation, Sections 29 to 34 explain what it is not.If there is a previous art (i.e., if the prior art discusses something that falls within the scope of an accused claim), the claim will be declared anticipated if the claimed invention can be executed by studying the prior art.It may not be essential to redo the previous art test, but expert opinion could be used to better identify anticipation utilizing relevant expertise. It can also be determined by demonstrating the predictable effect of what is disclosed in the prior art, irrespective of whether it is a product or procedure that falls within the claim’s scope.

Court on Novelty

  1. In the case of LallubhaiChakubhai Jariwala v ChimanlalChunilal and Co[1], the court held that, the two qualities required for a patent’s validity are originality and utilized, however the essential test is the invention’s novelty. Novelty is required because without it, there would be no value to the public and, as a result, no recognition of the patentee [when interpreting the component connected to public knowledge and public usage].
  • Farbewerke Hoechst AktiengesellschaftVormals Meister Lucius v Unichem Laboratories[2]: To anticipate a patent, a preceding publication or action must include the entire invention in question, i.e., all of the elements that restrict the claim under challenge. To put it another way, the anticipation must characterize, or be an infringement , the claim being challenged.

If the innovation has been explained in front of a learned society or published during the proceedings of such learned society, the Patents Act allows the inventor a one-year grace period to file a patent application.The grace time also allows for reasonable experiments, such as data creation for regulatory approval; however, it is not applicable where an invention is sold or commercially worked in India. Any use or publishing of an invention after the filing of a provisional patent application in India, on the other hand, will not be deemed anticipation.Similarly, while determining novelty, the grounds of public display (Sections 31(a), 31(b), and 31(c)), public working (Section 32), and conventional knowledge (Section 3(p)) are important considerations. Knowledge, whether oral or in any other form, can also predict an invention in a local or indigenous group in India or elsewhere.

Novelty an essential condition for patentabilty: US Perspective

To be issued a patent, an invention must be novel (unique), valuable, and not obvious. Prior art, which incorporates anything published in printed media or mentioned in a patent application, cannot be used in the invention. The proposed patent cannot be protected if the innovation is judging prior art.35 U.S.C. 102, which establishes the theory of anticipation by requiring novelty of invention, is one of the most common issues of patent applications. 102, in essence, requires the patent application to show that the invention is novel. In other words, a claimed invention ought to be identical to the previous art in order to violate the “newness” requirement.

Anticipation is best described as the inverse of infringement: “What will infringe subsequently, will anticipate earlier.” So, one way to see if your invention is novel, as required by Section 102, is to see if it would infringe on another patent that has previously been issued.If the reference is a printed publication rather than a patent, consider whether your innovation would infringe if the printed publication were a granted patent rather than just a printed publication.The anticipation (and thus newness) criterion is strict, requiring that each aspect of the claimed invention, as set forth in the claim, be disclosed either explicitly or inherently by a single previous art reference.To be clear, every element of the contested claim does not have to be expressly outlined in a single prior art reference; however, previous art may naturally disclose the challenged claim if “the prior art unavoidably performs in compliance with the limits.”If the person who is making a verdict (i.e., a judge or a patent examiner) needs to go beyond a single prior art reference, the relevant challenge is under 35 U.S.C. 103 for obviousness rather than 102 for novelty.

Some rules under America Invents Act for getting patent registered:

  • No patent can be obtained if the invention in question was detailed in a patent issued anywhere in the world previous to the patent applicant developing it.
  • No patent can be granted if the invention in question was detailed in a printed publication published anywhere in the world prior to the patent applicant developing it.
  • If the invention was widely known in the United States previous to the patent applicant inventing it, but hasn’t necessarily patented or published, no patent can be granted.

In every one of these three circumstances, the prior reference or knowledge is deemed to be prior art, preventing a patent from being issued at this time.


In India, the test for anticipation now involves absolute originality, thanks to the inclusion of a definition for new inventions. Under the Patents Act, the definition of previous art has been broadened since, in addition to prior publication internationally and prior use in India, prior use outside India now counts as prior art, as does conventional ‘ancient’ knowledge in India.Patent enforcement actions have increased significantly in India, and interpretations are made on a case-by-case basis. In light of the fast changing technology environment, it will be interesting to see how cases are decided at the IPO.

The inventor will still have a personal grace period to erase their own disclosures under the US first to file procedure. This personal grace period states that the inventor’s own disclosures, as well as the disclosures of others who have derived from the inventor, cannot be used as prior art if they occurred within 12 months of the patent application filing date.

[1](1935) 37 BOMLR 665

[2] Suit No. 132 of 1962

Contributed by:– Nidhi Jha, Legal intern at LLL

 copyright lawHigh CourtIndian PatentIntellectual PropertyJudgmentLegal NewsNoveltytrademark

Leave a Comment

Your email address will not be published. Required fields are marked *

Chat With Us
Scroll to Top