Why? What? When? How? These are some of the most used words in John’s dictionary. He’s pretty curious about the workings behind what happens in his life, and many of those have to do with the inventions and the workings of intellectual property in the world around him.
John’s been learning a lot about patents and patent procedures lately, and something that always comes up is the Novelty requirement for patents. This has made him curious about what exactly it is that would make a patent non-novel. So he askes IP Geek to explain it in a little more detail.
Hello IP Geek.
Let’s talk about novelty in patents. We’ve covered this topic before a little, but I just want to know if I’ve got everything right. For a patent application to be novel, it means that it should be new. But how exactly is this newness determined? Are there any exceptions to the general rule of novelty?
Hello, John!
As you can probably tell, an invention means that the technology must be new. From an examiner’s perspective, in order to qualify as “novel”, there should be no prior art that is the same as the invention that is publicly available before the date of application.
Let me explain that a little more. Prior art refers to all publications, known techniques, and marketed products.
If you file your invention on January 1st 2023 but if an article has been published about the same invention on December 30 2022, your invention lacks novelty due to conflicting prior art. The same applies to large scale public products using the invention. This publication can be done by not just a third party, but also the inventor themselves. If it happens, the invention is said to be “anticipated”.
Even the inventor themselves? That seems pretty strict. Aren’t there any exceptions to this?
There are! Sections 29 to 34 of the Patents Act specifically lay out exceptions to anticipation. For example, as per Section 29 if anyone unlawfully obtains the information from the inventor and publishes it, it does not count as anticipation. Similarly, communication by the inventor to the government or public displays in government-approved exhibitions is okay.
Additionally, if the invention has been undergoing a reasonably sized trial for less than a year, your application won’t be anticipated because of it.
Wow. All of that seems very complicated, and the first exception looks like it needs proof. I think it might be best for inventors to closely guard their inventions till the application stage.
That certainly solves a lot of issues, yes. Unless it’s absolutely necessary, inventors are always advised to keep their inventions under wraps, and always use non-disclosure agreements when sharing details of it with other people, even fellow inventors, investors or patent attorneys.
There’s one more important thing about novelty people tend to overlook. Prior art searches are global, even if patent rights are territorial. So a paper published in the USA would still anticipate a patent application filed in India.
I see. Clearly secrecy is the way to go here. Thanks a lot for letting me know all these details, IP Geek.
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