Understanding Patent-ability (Novelty)

There are three main criteria for getting a patent application granted, 1. Novelty, 2. Inventive step (non-obvious) and 3. Industrial use (utility). In this article i would emphasis on novelty.

There is no restriction by any patent office across the globe on filing a patent application for any technology (exception nuclear and defense technology in India). Depending upon nationality and domicile of a person a patent application can be filed with the respective patent office with permissions if required. For example, an Indian national cannot file direct patent application in other countries, unless the technology has been conceived on the soil of that particular country. Either an Indian national can first file a patent application with Indian patent office and then file it internationally after defined period and within stipulated time. Similarly, a legal entity (Company or Institutes) can choose an appropriate office for filing patent application.

Once the patent application is filed with the patent office, the patent application gets published and then goes for examination. At the stage of examination, the patent document is verified by the examiners for any typographic or formatting errors. Thereafter, based on the claims submitted with the patent application, search is conducted to cite relevant documents.

What kind of citation can prevent patent application for getting granted?

Many a times it is mistaken that only patents are cited during search for checking novelty. This is not the case, any document that is public-ally available, such as patent applications, patents, journals, blogs and other literature can be cited for finding similarity. Even general knowledge available with the public may be considered relevant. Section 2(l) of Indian Patent Act 1970 states that “new invention means any invention or technology which has not been anticipated by publication in any document or used in the country or elsewhere in the world before the date of filing of patent application with complete specification, i.e., the subject matter has not fallen in public domain or that it does not form part of the state of the art”. In this section, “anticipated by publication in any document” refers to the documents that are mentioned before (patent applications, patents, journals, blogs and other literature), which may be considered relevant for negating novelty of the technology.

Another mistake inventors or applicants make is presuming that only patent or other documents published or technology used in a specific jurisdiction are considered testing novelty. For example, suppose a technology is new in India and same needs to patented in India. Even if the technology has never been implemented, used or available in India it cannot be patented. As per section 2(l), the technology should “not been used in the country or elsewhere in the world”. Which means, any technology that is used or implement or published as a patent or literature or know how, cannot be protected under patent in other countries. Therefore, the patent examiner can cite any document/publication from across the globe as a relevant citation for negating novelty of the technology.
Generally the patent applications are examined after approximately 2-3 year after filing. This does not mean that what every examiner finds on that day, will be considered relevant. Specifically, the examiner will cite the documents that are public-ally available before the date on which patent application was filed. Therefore, it is important to file patent application as early as possible by conducting a search for checking novelty of the technology.

Therefore, for destroying novelty of a technology, any documents published before the date of filing is relevant.

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