Novelty and Obviousness Compared

1The difference between novelty and inventive step is that novelty requires an invention to be quantitatively different from the information disclosed earlier, ie, it should not have been in the public domain, whereas inventive step is a qualitative requirement to ascertain whether the contribution is creative enough to warrant a monopoly. (See Lionel Bently and Brad Sherman, Intellectual Property Law, 2000, p 413. See also Mölnlycke AB v Procter & Gamble Ltd (1994) RPC 49, p 112.) In other words, novelty is concerned with the time of disclosure of information about the invention and inventive step pertains to the substance of the invention.

2Novelty is a precondition for the grant of a patent. When grant of a patent is viewed as a contract, novelty assumes significance as it ensures that the inventor provides the consideration necessary for the grant of a patent. (See Bovill v Finch [LR] 5 CP 523 where novelty was regarded as the consideration for the grant of a patent.) Novelty ensures that a patent is not granted for things already known and to prevent re-patenting. The object of this requirement is to ensure that the grant of a patent does not stop a person from doing what they were doing before such a grant. As noted earlier, this effect was first brought about by the Statue of Monopolies in 1623, prior to which the Crown granted patents to stop actions that were already carried out by the general public.

3Obviousness would cover practically every case of lack of novelty. However, the differences in the state of the art for the purposes of determining novelty and inventive step has to be borne in mind. (See also Mills & Rockley (Electronics) Ltd v Technograph Printed Circuits Ltd [1971] FSR 188, p 193, (1972) RPC 346 (HL).) In determining lack of novelty by anticipation, all other possible grounds of revocation should be disregarded. For this limited purpose, a claim should be treated as valid until it is anticipated. In determining obviousness, the first step would be to assume that the invention is novel and that the invention is different from the closest prior art in some recognisable manner. Once this assumption is made, the next question would be to ask whether the invention was obvious and thus did not involve any inventive step to make a product or process falling within the scope of the claim in question. (See Minnesota Mining and Manufacturing Co v Bondina Ltd (1973) RPC 491, p 536, [1972] FSR 331.) In determining whether the invention claimed is obvious, no comparison is to be made between the preferred embodiment of the invention claimed and the prior art. If any embodiment within the scope of the claim is obvious, then the claim would be invalid. The mere fact that the invention satisfies the need of novelty very closely need not mean that the claim is obvious. (See Hoechst Celanese Corpn v BP Chemicals Ltd [1997] FSR 547.)

4In Bishwanath Prasad Radhey Shyam v Hindustan Metal Industries (1978) the Supreme Court, holding that “Since in India, also, the law on the subject is substantially the same, it will be profitable to extract the same”, set out the passage that “‘subject-matter’ is the crucial test, for which there may well be novelty not involving an ‘inventive step’, it is hard to conceive how there can be an ‘inventive step’ without novelty” (para 22).

5The distinction between novelty and obviousness has to be maintained. It is the requirement that performance of an invention disclosed in the prior art must necessarily infringe the patent which distinguishes novelty from obviousness. If performance of an invention disclosed by the prior art would not infringe the patent but the prior art would make it obvious to a skilled person how he might make adaptations resulting in an infringing invention, then the patent would be invalid for lack of an inventive step but not for lack of novelty. (See SmithKline Beecham Plc’s (Paroxetine Methanesulfonate) Patent [2006] 1 All ER 685, (2006) RPC 10, para 25.)

6The grounds of anticipation and obviousness, though both are dependant on the state of the art, should be kept distinct and proved separately. (See Beecham Group Ltd’s (Amoxycillin) Application (1980) RPC 261, p 287 (CA).) As stated earlier, in considering the state of the art for the purpose of determining obviousness, unpublished applications shall not be taken into account.