Novelty and Non-obviousness in Patent Law

In legal terms, any person who invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent, subject to the conditions and requirements of the law. A “process” is defined by law as a process, act or method, and primarily includes industrial or technical processes. A process is the way an invention performs rather than the way it is structured. Computersoftware performs a certain way, it makes certain processes. Another example would be the process for making a drug. “Machine” should need no explanation. The term “manufacture” refers to articles which are made, and includes all manufactured articles. “Composition of matter” relates to chemical compositions and may include mixtures of ingredients as well as new chemical compounds. Basically, you can patent things that are made or the processes for making the products.
Regrettably, in patent law, the concept of obviousness is far from the term’s common usage. The statutory requirement of "non-obvious”. “Obvious” subject matter is an idea that would have been obvious to a person of ordinary skill in the art. "Obvious" concepts are not patentable when the teachings of one prior art reference are viewed in combination with the teachings of one (or more) different prior art references. The patent law specifies that inventions must be “useful”, which means have a useful purpose. Being useful also includes operativeness, meaning that an invention must operate or perform its intended purpose. It should be noted that laws of nature, physical phenomena and abstract ideas are not patentable no matter how useful they are. You cannot patent an idea or suggestion for a new process, machine, manufacture, etc. You can only patent the actual invention and you must provide the PTO ( Patent and Trademark Office) with a complete description and specification of the actual working invention.
The CAFC’s decision in Cohesive Tech. v. Water Corp.(Fed. Cir. 2008) has raised the question whether Anticipation is the “epitome of Obviousness”, lately has become a topic of a hot discussion in the US patent circle . The decision relates to the notion that novelty and non-obviousness are separate and distinct inquiries and that a patent may be found anticipated yet non-obvious. The Court, through an example, illustrated that an anticipated claim might still be non-obvious. A patent claim having all the characteristics of a non-obvious invention, if inherently anticipated by a prior art reference the claim, may not be said to be obvious. Alternatively, existence of secondary consideration of non-obviousness is not relevant in an anticipated claim. In order for an invention to be patentable it must be new as defined by patent law. An invention cannot be patented if: The invention was known or used by others in India, or patented or described in a printed publication in India or a foreign country, before the current applicant filed for his or her patent. Someone else has made the same invention as you did. The invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country more than one year prior to the application for patent in India. You or somebody else revealed your invention more than a year ago to the public. The qualitative aspect of the difference between the claimed invention from the prior art being a determinant for non-obviousness of the invention. It is very much in consonance with the concept of ‘inventive step’. An inventive step may be equated with a feature of an invention involving a technical advance as compared to the existing knowledge, which makes the invention not obvious to a person skilled in the art to which the said subject matter pertains. The phrase ‘person having ordinary skill in the art’ is a legal fiction where ‘ordinary skill in the art’ denotes a level of expertise.

An invention lacks novelty when each and every one of its elements previously has been described or discovered. Those elements that have previously been described or discovered are referred to as “prior art.” The lack of novelty, also called anticipation, can thus be viewed as a “direct hit in prior art.” If the invention has been described in a printed publication anywhere in the world, or if it has been in public use or on sale in the

before the date that the applicant made his/her invention, a patent cannot be obtained. If the invention has been described in a printed publication anywhere, or has been in public use or on sale in this country more than one year before the date on which an application for patent is filed in this country, a patent cannot be obtained. In this connection it is immaterial when the invention was made, or whether the printed publication or public use was by theinventor himself/herself or by someone else. If the inventor describes the invention in a printed publication or uses the invention publicly, or places it on sale, he/she must apply for a patent before one year has gone by, otherwise any right to a patent will be lost.
Even if you don’t find the prior art to prove it – you will not get a patent if your invention is not different enough from similiar inventions that are already out there. A patent maybe refused if the differences between your invention and another invention are too obvious. Your invention must be sufficiently different from what has been used or described before that it may be said to be nonobvious to a person having ordinary skill in the area of technology related to your invention. For example, the substitution of one material for another, or changes in size, are ordinarily not patentable. You can’t paint paint it red and make it twice as big and expect a patent. An (Substantive) examination of a patent application whether anticipated by a previous publication and/or by a prior claim, sets into motion the prosecution of a patent. Identification of the prior art initiates evaluation of an invention for the grant of a patent. Aspects of novelty and non-obviousness, two of the three fundamental criteria for patentability, the third being the Utility, are determined relative to the prior art. This position poses a very significant question which also reverberates in the question above, that whether novelty and non-obviousness, the two primary patentability criteria, are independent or a sequential analysis with novelty as the threshold inquiry and non-obviousness reached only when novelty has been established.
Another example of "nonobvious to a person having ordinary skill in the area of technology related to your invention" could be the following. An electronics engineer looks at a circuit board and observes that it is just like another circuit board except that a few parts are substituted. Someone who is not familiar with circuit boards may not understand that the two boards are very similiar, however, someone with traing thinks that it is obvious. You would want the electronics engineer to look at the circuit board that you want to patent and say, "heah, why didn’t I think of that!"The inquiry whether non-obviousness, as a determination of the difference constituting novelty, can be legally deemed sufficient to support the grant of patent, in the Indian context, is not supported by the patent practice. The novelty analysis is separate and distinct from the non-obviousness analysis. Patent examiners generally take novelty and inventive step (non-obviousness) analysis separately. The common understanding according to a section of Indian Patent Agents is that a single prior art reference revealing the description, organization and functioning in substantially the same manner as that of the claimed invention will anticipate it whereas inventive step is analyzed in combination of one or more prior arts extrapolating the state of the art. Further, during the Examination process, novelty and inventive step are considered together and the patent application is examined for both at the same time.
The interplay of novelty and non-obviousness of a patentable invention with respect to prior art references offers an interesting area to explore whether, in ascertaining the patentability criteria for a filed patent application, obviousness is of a lower threshold value for invalidity than anticipation. Examination process is further brought under one umbrella cover, by the PCT route where the International Searching Authority (ISA) examines the applications for both criterions at the same time. ISA indicates the prior art relevant for ‘novelty’ (anticipation) as “X” and for ‘inventive step’ as “Y” category. Finally, each claim is analyzed independently for their novelty and inventive step threshold to draw conclusion. A natural corollary of the above position is another related query that whether the result of the test of anticipation (novelty) will have a bearing on the inventive step (non-obviousness) analysis. The patent practitioners are of the view that if there is a claim in an invention lacking in novelty then the invention may be interpreted or appear to be lacking in inventive step as well, but only when considered as a whole. However, adjudication on this is very subjective. Thus, obviousness deals with near-direct hits by a single anticipatory reference. Where every element of a patent claim is found through the combined teachings of two or more prior art references, the claimed idea is not patentable.1The determination of what is obvious is a legal, not a technical, question. Consequently, chemists should work closely with the legal department to understand questions related to novelty or obviousness. Generally, if chemists were to define inventions in terms of what is different about them, better and clearer patents would result. Patent lawyers and inventing chemists should thus partner during the patent process.

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