Open Access Research Article
MAKING A CASE IN FAVOUR OF ASSESSMENT OF GLOBAL NOVELTY OF INVENTIONS
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Article Details
MAKING A CASE IN FAVOUR OF ASSESSMENT OF GLOBAL NOVELTY OF
INVENTIONS
AUTHORED BY
- NAKUL SINGH *
* B.A. LL.B. (Hons.),
West Bengal National University of Juridical
Sciences (NUJS), Kolkata
Conflict of
interest: The author declared “No
conflict of interest”
Funding: Nil
Abstract
The Aim of this paper is to
demonstrate how the assessment of the novelty of an invention on a global scale
or how assessment of global novelty is in public interest and furthers genuine
and ingenuity in comparison to when assessment of novelty is merely done on a
territorial scale. The paper will additionally elaborate on the concepts of
what is understood by novelty of an invention and why is the assessment of
novelty necessary. It is pertinent to note that Indian Patent regime is based
on the assessment of novelty of an invention on a global scale, a paradigm
which the author supports however, unlike India, there are many states which
carry out the assessment of novelty in their jurisdictions merely on a
territorial scale. The course of this paper will highlight the problems with
this approach and why there is a need for change.
Key words: Invention,
Assessment, Novelty
Introduction
Understanding Novelty:
Novelty is a crucial factor in determining
whether an invention may be protected by a patent. It is evaluated in comparison
to ‘prior art’ which is to say that the invention must be in stark
contrast and unprecedented from the point of view of all the ‘prior art’
or previously published works, well-known processes, and commercial goods [1].
Anticipation of the invention is detrimental
to novelty. Anticipation of an invention stands done when there is sufficient
description, mention or disclosure of the invention in either patent or
non-patent literature or there has been any prior use or commercial use either
by the inventor themselves or any other person [2].
For an invention to be anticipated that is
detrimental to novelty, it is also necessary that the disclosure must have been
made in such a manner that by the aid of which, the invention can be
successfully worked out, in other words, the disclosure of the invention or of
the necessary elements must be an enabling disclosure [3].
Why is assessment of Novelty
necessary?
Across jurisdictions, the dynamics of a patent
grant is that in exchange for disclosing the innovation to the general public
in order to advance the corpus of knowhow and technical knowledge in the public
discourse, the patent system grants the patentee the exclusive right to
restrict others from commercially utilising the invention [4]. The essential
goal of the patent system is to ensure that nothing that already belongs to
society gets alienated from it. In fact, awarding a patent on an innovation
that is already well known would impose restrictions on society's use of
existing knowledge without providing any compensation or benefit. The concept
of novelty plays a significant role in defining what belongs to society and
what may be withheld. As a result, one of the most significant and widely
accepted concepts of patent law is the necessity for innovation or novelty in
the proposed invention [5].
The assessment of novelty is also key in
deciding which inventions should be accorded protection and which should not.
It avoids a scenario in which two identical solutions would both get
protection. It also serves as a defending argument in the hands of those who
believe that an existing innovation is not worthy of protection. The simplest
method to demonstrate why a solution should not be protected is to call
into question its novelty. This makes it a crucial factor that should be
adequately considered while determining how to safeguard one's own solution.
Additionally, the basic tenet of patent law is
that only inventions equipped with utility and novelty are eligible for
patent protection. A patent must be the inventor's original discovery in order
to be accorded protection, rather than just a confirmation of what was
previously known at the time the patent was applied for [6].
A patent confers monopoly on commercially
exploiting an invention in exchange for disclosing it to the public, the
patent system aims to promote innovation. There is no benefit that is accrued
to the public from re-disclosing an invention if it is previously
known.
With a concept that is devoid of
novelty it is also doubtful that you will be able to get any valuable
intellectual property rights. This is primarily because if the concept is not
novel or devoid of utility, it will typically have little to no economic
or commercial value as well.
In the Indian scenario, when patent is a
territorial right, why is assessment of Novelty done on a global scale?
While the applicant can simultaneously file an
application for the same invention in a convention country or under the PCT [7]
in the Indian framework, the grant and protection with respect to the invention
is territorial in nature and only effective within the territory of India [8].
A question thus arises for consideration is
that when the protective rights are territorial in nature, why should the
assessment of novelty be done on a global scale?
It is pertinent to note that as far as the
recommendations of The Patents Enquiry Committee[i]
are concerned, it was recommended and affirmed by the committee that for
determining anticipation public knowledge and public use only in India should
be taken into account which is to basically imply that the standard of novelty
should be territorially limited and should not be that of global novelty [9].
This recommendation and view were however
modified by the Ayyangar committee Report on patents [10]. The Ayyangar
committee held that, the situation with respect to the availability of
books and literature in public libraries is different in India than it is in
the United Kingdom. Public libraries are few in India and the majority of
them lack enough resources for scientific literature, which is published in
large quantities in the world's most industrialised nations like the
United Kingdom. It is pertinent to note that aregulation like the one in the
United Kingdom would allow someone to get a valid patent in this country for an
invention about which information was already published abroad before the date
of the application, it would be clear that such a rule would be unjust and
detrimental to public interest [11].
The report also noted how the world has
significantly shrunk as a result of faster and improved forms
of communication, and that those who travel to other nations or learn
about inventions in other countries through foreign periodicals will have an
unfair advantage or will have an unfair edge in obtaining patents in
India on the pretext that the invention is "novel" in this
country [12].
The Methodology for Determining
Novelty
In order to determine whether the invention
has been anticipated or not, the examiner searches the patent and non-patent
literature for references to prior publications and prior claims in relation to
the invention's claimed subject matter in order to determine whether the
invention has been anticipated by prior publications and prior claims in order
to establish the novelty of the invention [13].
For the purposes of ascertaining or
determining novelty, the following documents are taken into consideration.
All Indian Patent Applications that claim the
same subject matter but were filed before the date of filing the
complete specification and published on or after that date. Moreover, the
Examiner may take into account papers that have already been printed in an
academic journal, special periodicals of learned societies and all documents
comprising of patent and non-patent literature which potentially disclose the
subject matter and can anticipate the invention [14].
The examiner also bears in mind that a prior
art only anticipates an invention provided all the elements and features of the
invention are present in the relevant prior art. Secondly, the disclosure of
the invention by the prior art can either be explicit or implicit. Thirdly, for
determining novelty, mosaicking of prior art documents should not be done.
Fourthly, the novelty of a specific and precise disclosure is not necessarily
taken away by a general disclosure but the novelty of a generic disclosure can
be taken away by a specific disclosure [15].
In case the citation of prior art is to be
rebutted on any of the grounds enumerated in sections 29-34, the onus of doing
the same is on the applicant.
Are there any Jurisdictions where there is a
geographical limitation of the protecting country on the assessment of Novelty
As far as the impact of anticipatory patent
and non-patent literature in the form of prior art is concerned, the
various patent regimes have chosen to take different methods. These strategies
are not arbitrarily selected options; rather, they represent various patent
cultures and societal goals, including the pertinent contexts in which
invention is commercially exploited and utilized.
Globally however, there has been significant
debate over the definition of "prior art". One argument is
that what is solely known or disclosed or available in the public
domain in the country providing protection should be taken into
consideration when determining prior art. Even if the information was already
accessible outside at the time the invention was made, it would not be included
if it was not brought into the nation before the invention was made [16].
Another point of view is the assessment of
global novelty, according to which an enabling disclosure already present or
made in any form of patent or non- patent literature, anywhere globally is
sufficient to be counted as prior art and accordingly anticipate the invention
and destroy novelty [17].
Majority of jurisdictions across the global,
have opted for the standard of global novelty. However, the jurisdictions of
the United Kingdom (prior to 1977) and the even the United States Patent law
have had geographical limitations on what constitutes prior art for the
purposes of determining anticipation.
It is pertinent to note that scholars have for
long argued for declaring the US patent law, 35 U.S.C. § 102 unconstitutional
as it categorically excluded evidence of knowledge in public domain or use in
foreign or developing countries, from being relevant or being considered for
granting U.S. patents under the U.S. law. Be it knowledge in the public domain
or prior use, both parameters were excluded in the determination of novelty and
non-obviousness [18].
According to framers, the rationale for the
geographical limitation was that, a technology known or used in countries
abroad, if patented in the US would further the progress and growth of
technology in the US by giving its citizens the access to the technology and
its products which, otherwise they would not have had.
Prior to 1977, the position was similar in the
United Kingdom, in the sense that publications or prior use outside the united
kingdom was not detrimental to the grant of the patent in the United Kingdom,
provided the information or technology was new in the united kingdom. The
renowned case of Darcy v. Allein stated the objective of this limitation was to
encourage the bringing and the development of industries in the commonwealth
[19].
1.
Mondaq,
Novelty criteria in Patent
application, available at
https://www.mondaq.com/india/patent/1192098/novelty-criteria-in-patent-application
2.
Mondaq,
Novelty an Indian Perspective, available
athttps://www.mondaq.com/india/patent/655226/novelty-an-indian-perspective
3.
Mondaq,
Novelty an Indian Perspective, available
at https://www.mondaq.com/india/patent/655226/novelty-an-indian-perspective
4.
World
Intellectual Property Organisation, what
is a Patent? available at https://www.wipo.int/patents/en/.
5.
World
Intellectual Property Organisation, Intellectual Property Handbook, 2nd
Ed. P.17.
6.
Sean
Seymore, Rethinking Novelty in Patent
Law, Duke Law Journal, 2011, Vol.60(4).
7.
IP
India, Frequently Asked Questions, available
at https://ipindia.gov.in/writereaddata/Portal/Images/pdf/Final_FREQUENTLY_ASKED_QUESTIONS_-PATENT.pdf
8.
IP
India, Frequently Asked Questions, available
at https://ipindia.gov.in/writereaddata/Portal/Images/pdf/Final_FREQUENTLY_ASKED_QUESTIONS_-PATENT.pdf
9.
Report
of The Patents Enquiry Committee (1948-1950).
10. Report on the Revision of Patents
Law, 1959.
11. Report on the Revision of Patents
Law, 1959, P.40.
12. Report on the Revision of Patents
Law, 1959, P.41.
13. IP India, Manual of Patent Office
Practise and Procedure, 3rd Ed, 2019.
14. IP India, Manual of Patent Office
Practise and Procedure, 3rd Ed, 2019, P.82.
15. IP India, Manual of Patent Office
Practise and Procedure, 3rd Ed, 2019, P.82.
16. World Intellectual Property
Organisation, Intellectual Property Handbook, 2nd Ed. P.27.
17. World Intellectual Property
Organisation, Intellectual Property Handbook, 2nd Ed. P.27.
18. Margo Bagley, Patently Unconstitutional, The Geographical Limitation on Prior Art in
a Small World, Minnesota Law Review, 2003.
19. Report on the Revision of Patents
Law, 1959, P.43.
Article Information
MAKING A CASE IN FAVOUR OF ASSESSMENT OF GLOBAL NOVELTY OF INVENTIONS
Authors: NAKUL SINGH
- Journal IJLRA
- ISSN 2582-6433
- Published 2023/06/06
- Volume 2
- Issue 7
About Journal
International Journal for Legal Research and Analysis
- Abbreviation IJLRA
- ISSN 2582-6433
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