IPR
Topic 51 Novelty Inventive Step
Topic 51 — Novelty, Inventive Step and Industrial Application
Section 2(1)(j) of the Patents Act 1970 defines an "invention" as "a new product or process involving an inventive step and capable of industrial application." These three requirements — novelty, inventive step, and industrial application — together form the core patentability test. They are the three pillars on which every patent application must rest. This topic walks through each requirement in detail, the leading Indian and international cases, the operational tests applied by the Indian Patent Office, the relationship to Section 13 (anticipation) and Section 25 (opposition), and the practical drafting strategies for each.
1. The Three Pillars of Patentability
1 NOVELTY new vis-à-vis prior art | 2 INVENTIVE STEP non-obvious advance | 3 INDUSTRIAL APPLN practical use |
✅ All three required All three requirements must be satisfied. If the invention lacks novelty (already disclosed in prior art), it fails — even if it would have been a brilliant inventive step. If it lacks inventive step (obvious to a skilled person), it fails — even if technically novel. If it lacks industrial application (purely theoretical or aesthetic), it fails — even if novel and non-obvious. Patent application drafting must therefore satisfy all three; opposition strategy may target whichever is weakest. |
2. Novelty — Section 2(1)(l) and Section 13
A. Statutory Basis
‘New Invention [Section 2(1)(l)]’ — 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. |
B. The Operational Concept of Prior Art
Novelty is judged by reference to the "state of the art" or "prior art" — everything available to the public before the date of filing the patent application (or the priority date if priority is claimed under the Paris Convention). Prior art includes:
- Prior published documents — patents, patent applications, scientific journals, books, conference proceedings.
- Prior public use — products sold, processes operated, devices demonstrated to the public.
- Prior public knowledge — knowledge available to a member of the relevant trade or industry.
- Prior oral disclosure — public lectures, demonstrations, sales pitches (subject to evidentiary issues).
C. Section 13 — Examination for Novelty
Section 13(1) — Search for Anticipation "The examiner ... shall, in addition to making the inquiries [of formal compliance], make investigation for the purpose of ascertaining whether the invention so far as claimed in any claim of the complete specification— (a) has been anticipated by publication before the date of filing of the applicant's complete specification in any specification filed in pursuance of an application for a patent made in India and dated on or after the 1st day of January, 1912; (b) is claimed in any claim of any other complete specification published on or after the date of filing of the applicant's complete specification, being a specification filed in pursuance of an application for a patent made in India and dated before or claiming the priority date earlier than that date." |
D. Indian Approach — Absolute Novelty
India follows "absolute novelty" — disclosure anywhere in the world destroys novelty. This is in contrast to some "relative novelty" systems where only domestic disclosure counts. Indian Patent Office searches prior art globally:
- Indian patent specifications (since 1912).
- Foreign patent databases (USPTO, EPO, JPO, etc.).
- Scientific literature (PubMed, Science Direct, etc.).
- Traditional knowledge (TKDL).
E. Tests for Novelty
Indian courts (drawing from EU and UK jurisprudence) apply the following tests:
- Single-document anticipation — a single prior art document must disclose all the elements of the claim (the "all-elements test").
- Enabling disclosure — the prior art must enable a person skilled in the art to practise the invention; mere mention is not enough.
- Implicit disclosure — what is implicit in the prior art (necessary corollaries) also counts as disclosure.
- Inherent characteristics — properties inherently present in a prior art product, even if not explicitly mentioned, count as anticipated.
F. Grace Period — Section 31
Section 31 provides limited "grace period" exceptions where the inventor's own disclosure does not destroy novelty:
- Disclosure in international exhibitions — within 12 months.
- Disclosure to government departments — for evaluation purposes.
- Disclosure during reasonable trial — if inventor was authorised.
- Disclosure at scientific society meetings — within 12 months, with notice to the Patent Office.
✅ Best practice — file before disclosing The grace period exceptions are narrow. Best practice is to file the patent application BEFORE any public disclosure — academic publication, conference presentation, demonstration, or commercial offer. A provisional application with brief description, filed before disclosure, secures the priority date; the complete specification can follow within 12 months under Section 9. |
3. Inventive Step — Section 2(1)(ja)
A. Statutory Definition
Section 2(1)(ja) — Inventive Step "Inventive step" means a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art." |
B. The Three Components
A TECHNICAL ADVANCE over existing knowledge | B ECONOMIC SIGNIFICANCE commercial value | C NON-OBVIOUSNESS to skilled person |
- Technical advance OR economic significance — disjunctive at this level. Either is sufficient.
- AND non-obviousness — the conjunctive requirement. The advance/significance must additionally be non-obvious to a person skilled in the art.
✅ India's unique formulation — economic significance Section 2(1)(ja) is unique to Indian patent law. Most jurisdictions assess inventive step purely on technical grounds. Indian courts have cautiously applied the "economic significance" element, generally treating it as additional to (rather than substitute for) technical advance. The Novartis decision discussed Section 2(1)(ja) but did not need to resolve the technical/economic boundary. |
C. The "Person Skilled in the Art"
Inventive step is judged from the perspective of a hypothetical "person skilled in the art" — a notional construct with the following characteristics:
- Has access to all the relevant prior art at the priority date.
- Has the ordinary skill, knowledge and creativity expected in the relevant technical field.
- Is presumed to have read and considered all relevant prior art.
- Is not assumed to be brilliantly creative — but applies routine engineering judgment.
- Can be a team of skilled persons in interdisciplinary fields.
D. Operational Tests for Inventive Step
Indian courts (drawing from international practice, particularly the EU "problem-solution approach") apply:
- The Cripps test (now reformulated) — would the skilled person, faced with the technical problem, have arrived at the invention through routine work?
- The "obvious to try" test — was the invention obvious as one of a small number of routes to try?
- The "would" not "could" test — would the skilled person actually have made the invention, not merely could they have?
- Secondary indicators — commercial success, long-felt need, failure of others, copying by competitors all support inventive step.
📖 Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries, AIR 1982 SC 1444 Facts — Patent on a method of manufacturing utensils. Defendant challenged validity for lack of inventive step. Holding — Supreme Court (Justice O. Chinnappa Reddy) held that the patent lacked inventive step. The Court held: "It is important to bear in mind that in order to be patentable an improvement on something known before or a combination of different matters already known, should be something more than a mere workshop improvement." Significance — Locus classicus on Indian inventive step. Established the "more than workshop improvement" standard. Cited in nearly every subsequent Indian inventive step decision. |
4. Industrial Application — Section 2(1)(ac)
A. Statutory Definition
‘Capable of Industrial Application [Section 2(1)(ac)]’ — in relation to an invention, means that the invention is capable of being made or used in an industry. |
B. The Practical Use Requirement
Industrial application requires that the invention be capable of practical use. The bar is generally low:
- "Industry" is broadly construed — manufacturing, services, agriculture, pharmaceuticals, biotechnology.
- The invention need not actually be used; it must be capable of being used.
- Theoretical or speculative inventions without practical application fail.
- Inventions purely aesthetic without functional use fail (covered by designs/copyright).
C. Practical Examples
Inventions failing industrial application:
- Mathematical theorems with no practical application (also fails Section 3(c) and Section 3(k)).
- Pure mental methods without physical embodiment.
- Methods of treating non-existent conditions.
Inventions satisfying industrial application:
- Pharmaceuticals (capable of being manufactured and used).
- Manufacturing processes.
- Mechanical and electronic devices.
- Software-implemented inventions with technical effect.
- Biotechnology methods producing useful results.
5. Anticipation — Sections 29 to 34
Sections 29-34 of the Patents Act 1970 elaborate on anticipation:
- Section 29 — anticipation by previous publication.
- Section 30 — anticipation by previous communication to government.
- Section 31 — exceptions: international exhibition, scientific society meeting, reasonable trial.
- Section 32 — anticipation by public working of the invention.
- Section 33 — anticipation by previous claim in another patent.
- Section 34 — no anticipation if matter published or used was without consent of true owner.
✅ Sections 31-34 — narrow exceptions Sections 31-34 carve out narrow exceptions to anticipation. The most commercially important is Section 31 — disclosure at international exhibitions or scientific societies, with proper notice and procedure, does not destroy novelty. Section 34 protects against unauthorised disclosure by others — if the prior disclosure was without the inventor's consent, it does not destroy novelty. |
6. Practical Drafting and Litigation Strategies
A. Maximising Patentability at Drafting
✅ Twelve drafting points for novelty, inventive step, industrial application Conduct comprehensive prior art search before filing — patent databases (USPTO, EPO, INPASS), scientific literature. Draft claims of varying breadth — broad genus claims; narrower species claims; specific embodiments. Include all the elements that distinguish over the closest prior art. Demonstrate technical advance or economic significance with experimental data. For pharmaceutical applications, include comparative efficacy data — pre-empts Section 3(d) and inventive step challenges. For software applications, frame as software-implemented inventions with hardware integration; demonstrate technical effect. For combinations, demonstrate synergistic effect — pre-empts Section 3(e) and inventive step challenges. For improvements, identify the "more than workshop improvement" character (Bishwanath Prasad standard). For broad claims, support with multiple specific examples; address potential prior art. For industrial application, articulate the practical use clearly. For grace period reliance, document the protected disclosure type and timing carefully. For PCT national phase entries, tailor Indian claims to Section 3 considerations. |
B. Opposition / Revocation Strategy
A defendant or opponent attacking patentability:
- Identify the closest prior art — single document for novelty; combined documents for inventive step.
- For novelty challenges, find an "all-elements" anticipation in a single prior art reference.
- For inventive step, demonstrate that the combination of prior art references would have led the skilled person to the invention.
- For industrial application, show that the claimed invention is theoretical or has no practical use.
- Combine with Section 3 challenges where applicable (3(d), 3(e), 3(k)).
🎯 EXAM POINTERS — TOPIC 51
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