Generally, whenever an inventor discusses his invention with a patent attorney, the most important items sought or analyzed by the attorney to determine patentability involve
1. Novelty
2. Inventive step or no evidence
3. Capable of industrial or utility application
Along with the above parameters, the invention should also fall within the scope of patentable matter and should not be part of “Inventions that are not patentable”
1. Novelty
Novelty (etymologically means newbie / new) is the quality of being new and therefore should not be part of the state of the art or prior art. It means that the invention should not be anticipated / disclosed in any publication, previously claimed in any invention, used anywhere in the world before the fill date or priority date.
The state of the art comprised all the material (published document, previous claims and use of the invention in a certain part of the world) available to the public before the priority date. And during the assessment of anticipation per post, the degree of diffusion it is not taken into account, therefore a single published document or its distribution to a single personnel constitute part of the state of the art / prior art.
The anticipation test of prior art documents is a Fireproof for the determination of novelty and is also rigorous, which implies that the prior art document must be completely contained in a single document and therefore the cumulative effect of all available prior art references is not allowed on the priority date.
2. Inventive step or no evidence
Once the novelty is confirmed, the non-obviousness of an invention is evaluated, which implies that the inventive step of an invention should not be obvious to a person skilled in the art, wherein the skilled person is an ordinary practitioner who knows the common general knowledge in the art and has access to all that is in the state of the art.
Inventive step has been covered in detail in section 2 (1) (ja) of the Indian Patent Law, which states that to prove inventive step, the invention must have technical advance compared to existing knowledge available or should be economically important compared to the state of the art available.
Therefore, an invention is said to be obvious if the prior art provides motivation for the invention and, by combining the teachings of different prior techniques available on the priority date, would lead to the formation of the inventive step in the claimed invention that it is obvious to the expert. in art.
Obviousness is a major obstacle and is largely based on facts and the patent office uses numerous indicators to access inventive step including:
1. Complexity of work not normally carried out by personal investigation.
2. Invention intended to satisfy a long-felt need in industry.
3. Failure of others to find a solution to the problem in question.
4. Cheaper and cheaper product.
3. Capable of industrial application or utility
Capable of industrial application is a common notation for European and Indian patent law, while the US patent examiner usually considers utility. Industrial applicability means that the invention can be manufactured or used in an industry, where industry is something that involves any useful or practical activity as opposed to intellectual or aesthetic activity.
On the other hand, to determine the credibility of a utility patent, the application must express a specific, credible and substantial utility.
And when considering the utility requirement for patents, there are three main factors to review:
1. Operability of the invention;
2. Beneficial use of the invention;
3. Practical use of the invention;
These elements for patentability are essentially the same in all major patent law unions, convention countries and form an important component in determining the fate of an invention during prosecution.