Typically, whenever an inventor discusses his or her invention with a patent attorney, the most important elements the attorney looks for or analyzes to determine patentability involves
1. novelty
2. Inventive activity or non-obviousness
3. Capable of industrial application or utility
Along with the above parameters, the invention must also be within the patentable subject matter and should not be part of “Invention that is not patentable”
1. novelty
Novelty (etymologically means rookie/new) is the quality of being new and, therefore, should not be part of the state of the art or the state of the technique. It means that the invention must not be anticipated/disclosed in any publication, previously claimed in any invention, used anywhere in the world before the filing date or priority date.
Prior art includes all subject matter (published document, prior claims, and use of the invention in a certain part of the world) available to the public before the priority date. And during the evaluation of anticipation by publication, the degree of diffusion is not taken into account, so that a single published document or its distribution to a single person constitutes part of the state of the art/prior art.
The proof of anticipation from documents of the state of the art is a bed test for the determination of novelty and is also rigorous, which implies that the prior art document must be contained in its entirety in a single document and, therefore, the cumulative effect of all prior art references is not allowed. prior art available on the priority date.
2. Inventive activity or non-obviousness
Once novelty is confirmed, the lack of evidence of an invention is assessed, which implies that the inventive step of an invention must not be obvious to a person skilled in the artin which the skilled person is an ordinary professional aware of the common general knowledge in the art and has access to the entire state of the art.
Inventive step has been dealt with in detail in section 2 (1) (ja) of the Indian Patent Act, which states that in order to prove inventive step, the invention must have technical advance compared to existing knowledge available or should be of economic importance compared to the state of the art available.
Therefore, an invention is said to be obvious if the prior art provides a motivation for the invention and, by combining the teachings of different prior art available at the priority date, would lead to the formation of an inventive step in the claimed invention, which is obvious to those skilled in the art. in art
Obviousness is a major hurdle and it is largely based on fact, and the patent office uses numerous flags to access inventive step, including:
1. Complexity of work not normally performed by research staff.
2. Claim of the invention to meet a long felt need in the industry.
3. Inability of others to find a solution to the problem at hand.
4. Cheaper and more economical product.
3. Capable of industrial or utility application
Capable of industrial application is a common notation for European and Indian patent law, while utility is normally considered by the US patent examiner. Industrial applicability means that the invention can be made 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.