Novelty Search and Patentable Subject Matter!

Novelty Search:

A Novelty search, sometime interchangeably used with patentability search, is a type of prior art search which includes patent and non-patent literature search conducted to determine whether the invention is novel, or not.  A patent can be obtained on an invention if it necessarily meets the following three conditions:

• Novelty or Uniqueness:
  • Novelty means that an invention must be new or unique for it to be patentable. This is the first criteria that must be fulfilled for the grant of patent rights. An invention or technology will be considered a novel subject matter if it has not been anticipated or published in any form in the country or anywhere in the world before the filing of said patent application. It must be different from all previous inventions; the claimed invention is compared with all the previous inventions to access the difference.
  • The main purpose behind the novelty requirement is to prevent the invention or idea to be patented again. For an invention to be patentable it is necessary that the invention should not fall under prior art which should be known to the public and should not be anticipated however.
  • For example, an invention of ‘generating power from pressure’ may not be patentable because it is a public knowledge. However, a system incorporating new elements or a process which improves the efficiency of the power generation could be granted patent, provided, no prior art discloses its novel elements.
  • A prior art is a proof that your invention is already known. A prior art can be anything which can describe or show the use of the technology similar to your inventions, before your date of conception. Prior art constitute everything that is made available to the public anywhere in the world in any form before the filing or priority date of the concerned invention. For example a prior art can be a painting or a product, or a comic book etc.

• Inventive Step or Non-Obviousness
  • An Inventive Step or Non-Obviousness is one of the conditions that must be fulfilled by the Invention for qualifying as a Patentable subject matter. Some Patent office use the term Inventive Step while others use Non-Obviousness. The inventive step is used to find out if the patent is actually for a new item or just an obvious improvement on an existing item. Inventive steps make sure patents aren’t awarded to existing inventions with mere improvements done by the inventors. The inventive step can be considered as a measure of what society accepts as a valuable discovery. Additional reasons for the Inventive step or non-obviousness requirement are providing incentives for fundamental research rather than for ordinary improvements. The term “inventive step” is mainly used in Europe, while the expression “non-obviousness” is predominantly used in United States. Even though the basic principle is approximately the same, the evaluation of the inventive step and non-obviousness differs from one country to another.
  • For example: if an Invention for which a patent is sought is solving a problem by providing a solution which may be similar to a solution devised by a person having ordinary skills in the art (PHOSITA) who also worked on the same technology and developed the solution by applying their acquired technical knowledge. In this case the Invention will not be considered as an Inventive OR Non-obvious, since the solution to the problem is obvious to the person skilled in the art. However, if the invented solution is better than the existing solutions in terms of efficacy or accuracy etc. then such a solution may be deemed to have an inventive step.
  • According to EPO, An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art. If the state of the art also includes documents within the meaning of Article 54, paragraph 3, these documents shall not be considered in deciding whether there has been an inventive step.
  • According to 35 United States Code 103, A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art (PHOSITA) to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.

• Utility or Industrial Applicability:
  • Industrial applicability or utility is another requirement according to which an invention is considered industrially applicable if it can be produced or utilized in any kind of industry. Patent can only be granted for an invention which is susceptible of industrial application. According to the Guidelines for Examination, given out by the European Patent Office, “industry” should be categorized as a “physical activity which is of a practical nature and not an aesthetic one,” and not one that is necessarily related to manufacturing or machinery.
  • In the United States of America, An invention will not be useful if, in the application, the applicant fails to show the utility of the invention or fails to disclose enough information to show it to be useful, and another rare instance is that the utility as being described in the application is not credible. Instead of using industrial applicability, the United States law uses “practical utility”. The patents pertaining to Perpetual Motion Machines are often rejected since it is impossible to prove their utility.

What is a difference between Novelty and Patentability Search?

Although interchangeably used, Novelty and Patentability search differs in scope. A novelty search is a prior art search conducted to ascertain the novel aspect of the invention, as such it includes conducting a thorough patent and non-patent literature prior art search to identify patents, research papers, articles, scientific journals etc. In addition to Novelty Search, Patentability search also checks the other patentability criteria such as Inventive Step/Non-Obviousness and Utility/Industrial Applicability.

A patentability search is performed to confirm that invention fulfill this criteria and to find out any relevant information related to the invention which can act as a prior art.