It is not mandatory for an inventor to apply for a patent for his invention. The inventor may prefer to keep his invention secret instead of applying for a patent by disclosing it. However, where an inventor does not apply for a patent and exploits his invention by keeping it secret, he runs the risk of his invention being disclosed to his competitors either by way of reverse engineering, or by communication of information by someone who possesses such information and is under no obligation to keep it secret, or by an independent discovery. In such a case, other persons may start manufacturing the article by using the same invention. No remedy shall be available to the inventor in such a case. In Shinning Industries v. Shri Krishna Industries², the Allahabad High Court held that an invention is not a property right unless it has been patented. It is due to this reason that inventors normally apply for patents and get monopoly rights for a specific period of time to exploit their inventions to the exclusion of all others.

According to Sec. 2(1)(m) of the Patents Act, 1970, ‘patent’ means a patent for any invention granted under this Act. ‘Invention’ as defined in the Act, means a new product or process involving an inventive step and capable of industrial application.³ Thus, for an invention to be patentable, the following criteria are to be fulfilled –

· It must be novel (or not ‘anticipated’).

· It must involve an inventive step (thus, escaping the taint of ‘obviousness’).

· It must be capable of industrial application.

· It must not fall within any of the categories of subject-matter specially excluded or made subject to exception.⁴

Concept of Novelty

Prior to drafting the application, a patent attorney usually orders a patent search (also known as a novelty search or a patentability search). The purpose of the search is to try to determine whether the invention is novel and non-obvious, and therefore, whether to file a patent application. If the determination is made to file the application, the search also offers background and provides technical and commercial information regarding similar inventions. Some patent practitioners distinguish the novelty search from a more comprehensive search used by patent attorneys to assess the facts in patent litigation or patent licensing contexts.⁵ No system grants valid patents for inventions that are already known, they have to be novel. In this context, novelty means that the invention is different from the prior art (i.e. all previous products, devices, methods and documents describing these things). An invention is considered different from the prior art and therefore novel, when so single prior art item describes all of the invention’s elements. Even if an invention is novel in that it is different from the prior art, it can still flunk the novelty test if it has been described in a published document or put to public use. Although an invention may meet the novelty test, it still may be denied a patent if the patent examiner finds that the invention is obvious, that is, it is not innovative enough to deserve a patent.⁶

According to Sec. 2(1)(l) of the Patents Act, 1970, ‘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 order to be patentable, an invention should either be new or novel and result in a new product or process. The Patents Act, 1970 requires an invention to be new in the sense that on the date of filing of patent application, it should not form a part of the state of the art. State of art comprises all matter made available to the public before the priority date of the invention by written or oral description, by use, or in any other way. This means that in order to be patentable, an invention should not be found in any matter whether a product, a process, information about either or anything else, which has at any time been made available to the public anywhere in the world by written or oral description, by use, or in any other way. For instance, the recent grant of patent in the U.S.A. to turmeric products was attacked on this ground. The Indian Council of Scientific and Industrial Research (CSIR) challenged the grant of patent on turmeric by the U.S. Patent Office on the plea that the patent could not be granted since there was no novelty in the invention. Also that what was patented was already published in the Indian texts and use of turmeric preparations has been made in our country since time immemorial. The CSIR was successful in getting the grant of patent to an American Company revoked. This instance highlights the importance of the element of novelty for an invention to qualify for grant of patent.⁷

In Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries⁸, the Supreme Court observed: “The fundamental principle of Patent Law is that a patent is granted only for an invention which must be new and useful. That is to say, it must have novelty and utility. It is essential for the validity of a patent that it must be the inventor’s own discovery as opposed to mere verification of what was already known before the date of the patent.” The court further stated that whether an alleged invention involved novelty and an inventive step was a mixed question of law and fact, depending largely on the circumstances of the case. Although no absolute test that was uniformly applicable in all circumstances could be devised, certain broad criteria can be indicated. Whether the ‘manner of manufacture’ patented was publicly known, used and practiced in the country before or at the date of the patent? If the answer to this question is ‘yes’ it would negate novelty or ‘subject-matter’. Prior public knowledge of the alleged invention which would disqualify the grant of a patent could be by word of mouth or by publication through books or other media.⁹ In Blakey and Co. v. Lathern and Co.¹⁰, Cotton LJ stated that to be new in the patent sense, the novelty must show invention. In other words, in order to be patentable, the new subject-matter must involve ‘invention’ over what is old. Lord Davey stated in Raickmann v. Thierry¹¹, that it was not enough that the purpose was new or that there was no novelty in the application, so that the article produced was new in that sense, but there must be novelty in the mode of application. Novelty is lost where an inventor uses the invention secretly till the time it becomes a success and then applies for patent at the most advantageous moment. The invention will not be a new invention any more.¹²

Novelty requires that the invention be quantitatively different from what has been disclosed previously, that is, that the technical information disclosed by the patent is not already available to the public. In this sense, novelty is different from the requirement that to be patentable an invention must have involved an inventive step (or is non-obvious), which is basically a qualitative examination to ascertain whether the contribution is creative enough to warrant a monopoly. By ensuring that patents are not granted for products or processes which are already known, novelty helps to ensure that patents are not used to stop people from doing what they had already done before the patent was granted.¹³ Novelty need only be established in the process of manufacturing not in the article produced. Novel combination of two known ideas may be sufficient to establish novelty of subject-matter. If user if invention is made in the presence of persons other than the inventor, who are in no way bound by any confidential relationship not to disclose the invention or the user, and in circumstances which enable them to appreciate the essentials of the invention, the user in general constitute publication, although it was experimental only.¹⁴ Where the disclosure takes place after 15 years before the application and though no fraud or breach of confidence, the patent must be invalid. A secret process, of which publication has been going on for a number of years by manufacture with the aid of workmen who are not bound to secrecy, is no longer secret. It becomes public property. It was held that the invention patented lacked novelty at the time of patent and was not at the date of patent, a manner of new manufacturer.¹⁵

The first requirement of an invention is that the product must be new, and that a difference in the method of manufacturing an identical product does not make it new.¹⁶ The inventive step should be more than a mere workshop improvement; it must also be new and useful.¹⁷ It is not necessary that it should be anything complicated, provided it has something novel and not anticipated by prior art.¹⁸ The Privy Council in Canadian General Electric v. Fada Radio¹⁹, upheld a patent relating to wireless telephony, and in particular, to the selection in a receiving apparatus of oscillations of given wave-length from mixed oscillations. The inventor increased the selectivity of the apparatus and avoided loss of strength in the selected oscillations. The assembling in one device of the instrumentalities which furnished means foe providing selectivity, progressively improving from circuit to circuit, and at the same time preserving the signal strength was not itself new, but the particular use of it for the purpose described in combination with the other elements of the system, and producing the advantageous result, was held to have a sufficient element of novelty to support the patent. The Privy Council held that “it may be only a small step, but it is a step forward, and that is all that is necessary so far as the subject-matter is concerned.” The Privy Council explained that though there must be a substantial exercise of the inventive power, in some cases it might be very slight. It depends on the conditions of the art relative to the subject-matter at the relevant time.²⁰

In most cases, the assessment of novelty is relatively straightforward. It is because the standard is relatively precise; an appellate court can consider the question of novelty without first finding that the lower court has erred in principle.²¹ Here are some examples which illustrate the nature of the inquiry and point towards some of the problems requiring further discussion –

1) Van der Lely v. Bamford²²: mechanical product – The patentee claimed a hayraking machine in which the rake-wheels were turned not by engine but by contact with the ground. The patent was held to have been anticipated by a photograph in a journal which showed a hayrake with this feature. The issue was whether the photograph was clear enough to reveal the invention to an informed person. It was found to do so.

2) Fomento v. Mentmore²³: mechanical process/product – The patentee claimed a ball-point pen in which the housing around the ball and the groove running in a ring below the equatorial plane of the ball; this produced a smooth flow of ink. One alleged anticipation (a patent specification) was found to describe a method of enclosing the housing around the ball by “peining”, that is by hitting the open housing with a tool shaped like a candle-snuffer. Before there could be anticipation, however, it was necessary to show that peining would inevitably produce the desired ring-like groove in the correct position; and the earlier document, it was held, only gave instructions that ‘might well’ produce this effect.

3) Opinion: Availability to the Public²⁴: chemical combination – A chemical composition was marketed before the priority date of a patent claiming that substance. It could be analyzed and reproduced by a person with the appropriate skills. The claim was therefore anticipated.

Is the Invention Novel?

Once the invention under examination and the information disclosed by the prior art have been identified, it is then possible to determine whether the invention is new. In many cases, particularly where the prior art and the invention are identical or the prior art leads directly to the patented invention, it will be relatively easy to determine whether an invention has been made available to the public. This task becomes more problematic, however, where there is a gap between the prior art and the invention. The reason for this is that the same thing may be known to the public in a number of different ways: things may be described in terms of what they look like, how they are made, what they do, the problems they solve, what they are made of, how much they cost, and so on.²⁵ This gives rise to the question, how does a patent need to be described for it to be known by the public?

It is now clear that an invention will lack novelty if at its priority date, it has been ‘made available’ to the public.²⁶ An invention is said to have been made available to the public if there has been an “enabling disclosure”. Following the House of Lords decision in Synthon BV v. SmithKline Beecham²⁷, it is clear that enabling disclosure consists of two separate requirements which need to be satisfied if an objection of lack of novelty is to succeed.

These requirements are prior disclosure and enablement.

1) Prior Disclosure – The first point that must be established to show that a patent has been anticipated is that there has been a disclosure. Under what is sometimes called the reverse-infringement test, prior art will disclose a patent if it reveals subject-matter which, if performed, would necessarily result in an infringement of the patent.²⁸ With disclosure there is no room for experiment. While the person skilled in the art is permitted to draw upon the general knowledge common to the field, the prior art must place that person in a position where they are able to work the invention without the need for further information, or to engage in new experiments or some other additional inventive activity.²⁹

2) Enablement – The second point that needs to be demonstrated to show anticipation is that the disclosure was ‘enabling’. A disclosure will be enabling and thus destroy novelty if the public is given sufficient information to enable the invention to be put into effect. That is, a disclosure will anticipate an invention if it enables the invention to be ‘worked’ or ‘practised’.³⁰ Enablement means that the ordinary skilled person would have been able to perform the invention which satisfies the requirement for disclosure.³¹

Things and their Uses

1) New thing with an advantage – It has long been a basic assumption of our own and many other patent systems that the discovery of a use for a previously unknown thing or substance may found claims to the thing or substance itself, whatever it is subsequently used for.³² As justification it has been asserted that, if product per se claims could not be enforced in relation to uses known at the time of the patent application, much of the incentive to invest in original research would disappear.³³ How far this is true is guesswork. There are many who are obliged by the existence of prior art to settle for mere use claims. It is pure conjecture that they are less willing to undertake research because they will not enjoy the benefits of latter, unsuspected inventions. The present approach is nonetheless acceptable for its simplicity, so long as one assumes that for the most part first discoveries represent the most important breakthroughs. About this, however, there are now serious doubts. In medical and other biotechnology, the initial description and discovery of use for a gene or some smaller sequence of DNA is comparatively straightforward. The real difficulties lie in subsequent work on the stimulation and control of externally created genes and their operation in the circumstances of actual treatment.

2) New use of an old thing – The principle, that once a thing has been made public no one may have a patent for it, must be understood as a ground rule to which a number of qualifications are admitted. These certainly go some way towards giving patentees a monopoly commensurate with the novelty of their invention. But not in every case; for the system does not aim to reward merely for creative effort.

Many of the difficulties in the basic rules arise from the fact that an inventor may discover a new use for something already known. He may, for instance, discover that a well-known chemical can be added to water in a boiler so as to reduce scaling. To allow him to claim the chemical as a substance would give him a monopoly over all its uses, not just in boilers; this would be more than he is entitled to. But if no one has found a use for the chemical in boilers before, he is entitled to claim “a method for preventing scale in boilers in which….” Such a claim limits his monopoly to what he has discovered: only those who use the chemical in this way, or who induce its use, will infringe.³⁴

3) Selection Patents – In certain types of case, mainly concerned with chemical substances and mixtures³⁵, claims to a selection have been allowed. Where a class of things is already known from a general description of some kind, it has been possible to claim specific things within that class, or a sub-class, provided that these latter are stated to have an advantage over the class as a whole. This special approach relates to novelty, but not to inventive step: the obviousness of the selected class is determined on ordinary principles.³⁶ The special treatment of selections needs to be viewed in the light of the selection rules. First, the need of the selection only arises if the earlier description does disclose the later subject-matter sufficiently. It is not enough that the later thing in a sense fits within earlier language that is too general to describe any clear result. It has been a common practice, when novel chemical substances (or a few related substances) are shown to have a particular use, to refer to derivative and analogous compounds (sometimes totaling millions in number) which may be expected to show similar characteristics in some degree.³⁷ The “selection rules” allow the anticipatory effect of general revelations to be discounted where special advantage is stated by way of quid pro quo: this is the “consideration” and so goes to the sufficiency of the disclosure. Equally it may be looked upon as the quality which provides the incentive subject-matter. Selections, accordingly, are one occasion upon which a patentee is obliged to state the usefulness of his idea over the prior art. These “selection rules” allow claims to be made to substances and not merely to methods, and this by virtue of the advantages result in a new use. So where selection is possible, it is free of the difficulties of proving infringement of a method claim. In the field of human and animal treatment, where a method claim is not possible, the ability to secure a selection claim is often essential in order to get any patent at all.

4) New advantage of old thing – The selection patent rules do not directly create exclusive rights over a thing or activity which is specifically known, because they apply only to selection from a class, other members of which have been the subject of specific disclosure or use. But a claim can be treated as novel if a way of using a known thing where it is shown that this has a novel advantage is known. A claim was upheld to the use of a specified lubricant for the reduction of friction in engines, even though it has previously been used as a rust inhibitor.³⁸ Likewise a claim was allowed for a given compound as a regulator of plant growth, when previously it had been used as an insecticide.³⁹ In both cases, the physical acts within the claims would be exactly the same as the steps taken during the previous use. The circumstances thus differ from the new use of an old thing, where the earlier use can continue unobstructed by the later patent because it is not within the new claim. Subsequent decisions have at least stressed that there must be a new purpose and not merely the demonstration of a novel technical effect.⁴⁰ This seems in line with the concern of the House of Lords in Merrell Dow v. Norton⁴¹, that the provision of further information about a function should not become the basis for re-patenting. Two components were known for use in an agent which would sequester the ions of certain elements. It was not permissible to reclaim them for this same use purely on the basis of showing that they were together more effective than the use of either component by itself.⁴² A substance was first described as a food additive for flavor control and as a thickening agent; it was subsequently claimed as an emulsion stabilizer. If this last effect had previously been hidden, it could be novel.⁴³

CONCLUSION:

It may be seen that novelty involves an essentially factual investigation: Has the same invention already been made public? There is comparatively little room for the sort of evaluation that arises where the issue is obviousness: Is the step over what is already known significant enough to be called inventive? There are circumstances in which, if anticipation cannot be shown, there is no room for an attack on the grounds of obviousness. Equally, “what is hidden may still be obvious”. It is therefore important to know what counts as lack of novelty.

Thus, for an object to be patentable, it must be new. Prior public knowledge of the invention makes it non-patentable. If the public once became possessed of an invention by any means whatsoever, no subsequent patent for it could be granted either to the true or first inventor himself or to any other person, as the public could not be deprived of the right to use the invention because it was already possessing everything that the inventor or any other person could give it.

REFERENCES:

1. (1979) 2 SCC 511.

2. AIR 1975 All 231.

3. Patents Act 1970, S. 2(1)(j).

4. Patents Act 1970, Ss. 3 and 4.

5. Richard Stim, Intellectual Property – Patents, Trademarks and Copyrights 467 (2^nd Ed., West Thomson Learning).

6. Stephen Elias & Richard Stim, Patent, Copyright & Trademark 288-289 (5^th Ed., 2002).

7. Dr. B.L. Wadehra, Law Relating to Intellectual Property 6 (4^th Ed., Universal Law Publishing Co., 2009).

8. (1979) 2 SCC 511.

9. Humpherson v. Syer, (1887) 4 RPC 407.

10. (1889) 6 RPC 184 (CA).

11. (1896) 14 RPC 105 (HL).

12. V.K. Ahuja, Law Relating to Intellectual Property Rights 394-395 (4^th Reprint, LexisNexis Butterworths Wadhwa, Nagpur, 2011) (2007).

13. Lionel Bently & Brad Sherman, Intellectual Property Law 464 (3^rd Ed., Oxford University Press, 2001).

14. Dr. Vikas Vashishth, Law and Practice of Intellectual Property 530 (2^nd Ed., Bharat Law House, New Delhi, 2002).

15. Ganendra Nath Banerji v. Dhanpal Das Gupta, AIR 1945 Oudh 46.

16. Kirin Amgen v. Hoechst, 2005 RPC 169.

17. Bishwanath Prasad v. H.M. Industries, AIR 1982 SC 1444.

18. Ray Prakash v. Mangat Ram, AIR 1978 Del 1; Thomson Brand v. Controller of P&D, 1978 PTC Supplement 2, 192.

19. AIR 1930 PC 1.

20. V.J. Taraporevala, Law of Intellectual Property 37 (2005).

21. Technip France’s Patent, [2004] R.P.C. (46) 919, CA.

22. [1963] R.P.C. 61, HL. For anticipation in a drawing, see, e.g. Charbonnages’ Application [1985] O.J. EPO 310.

23. [1956] R.P.C. 87, CA.

24. [1993] O.J. EPO 277.

25. Merrell Dow v. Norton, [1996] RPC 76, 82 (HL).

26. Chemie Linz/Reinforced channels, T242/85 [1988] EPOR 77.

27. [2006] RPC 10 (HL).

28. Synthon BV v. SmithKline Beecham, [2006] RPC 10 (HL).

29. Hills v. Evans, (1962) 31 LJ Ch 457.

30. Merrell Dow v. Norton, supra note 20.

31. Synthon BV v. SmithKline Beecham, supra note 23.

32. Indeed, if a phrase of the type “for use as….” Is added this will be interpreted as meaning that the thing is suitable for that use; but the exclusive right extends to production, distribution or use for any purpose.

33. Armitage and Ellis, [1990] E.I.P.R. 119.

34. The exclusion of methods medical treatment limits the possibility of using use claims in pharmaceutical and veterinary patents. That is why special techniques are developed to expand their scope.

35. Only occasionally is selection possible in a mechanical case.

36. Rambaxy UK v. Warner-Lambert, [2006] F.S.R. (14) 209 upheld in [2007] R.P.C. (4) 65.

37. If, however, specific compounds or sub-classes have alone been mentioned and a later patentee is concerned with other compounds or sub-classes, the only issue normally is obviousness: a well known instance of the problem is Sharpe & Dohme v. Boots, (1928) 45 R.P.C. 153.

38. G02/88: Mobile Oil/Friction-reducing additive, [1990] O.J. EPO 93.

39. G 6/88: Bayer/Plant growth regulating agent [1990] O.J. EPO 114.

40. Robertet/Deodorant, [1999] E.P.O.R. 516.

41. [1996] R.P.C. 76.

42. Dow/Sequestering agent, [1994] E.P.O.R. 1.

43. W. Cornish & D. Llewelyn, Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights 192-197 (6^th Ed., Thomson, Sweet & Maxwell, London, 2008).

Received on 07.05.2013

Modified on 15.08.2013

Accepted on 20.09.2013

Research J. Humanities and Social Sciences. 5(1): January-March, 2014, 63-68