When applying for a patent, two fundamental requirements that every inventor must meet are novelty and inventive step. These legal concepts form the core criteria used by patent offices to assess whether an invention is eligible for protection. Without demonstrating both, a patent application is likely to be rejected. The terms patent novelty and inventive step are widely used in intellectual property law and play a crucial role in defining the threshold of innovation. Understanding the differences between these two requirements, and knowing how they are evaluated, is essential for inventors, legal professionals, and entrepreneurs alike.
Understanding Patent Novelty
Definition of Novelty
Novelty means that the invention is new and has never been disclosed to the public in any form anywhere in the world before the filing date of the patent application. An invention lacks novelty if it has been described in prior art, which includes any previous patents, publications, products, or public uses.
Global Standard for Novelty
Most jurisdictions follow the principle of absolute novelty, meaning that if an invention has been made public in any way through a journal topic, a conference presentation, or even a blog post before the patent filing, it is no longer considered new. Patent examiners compare the invention against the prior art database to determine if it has been previously disclosed.
Common Scenarios That Affect Novelty
- Public Disclosure: If an inventor publishes their invention or discusses it at a conference before filing, it destroys the novelty.
- Existing Patents: A similar invention already filed or granted elsewhere can act as prior art.
- Sale or Use: Commercial use or sale of the invention before filing can negate novelty.
Evaluating Inventive Step
What Is an Inventive Step?
An inventive step, also known as non-obviousness in the United States, refers to the requirement that an invention must not be obvious to someone skilled in the relevant technical field. It must involve a technical advance or a useful improvement that is not trivial or routine.
Importance of Inventive Step in Patent Law
While novelty ensures an invention is new, the inventive step ensures that the invention represents a meaningful contribution to existing knowledge. This requirement prevents the patenting of simple or minor modifications to known technology unless they provide a distinct technical benefit.
How Inventive Step Is Assessed
Patent examiners determine inventive step by evaluating:
- Prior Art Combinations: Whether the invention could be derived by combining existing teachings in prior art.
- Problem-Solution Approach: Identifying the problem the invention solves and checking if the solution is obvious to a skilled person.
- Unexpected Results: Innovations that yield surprising technical effects may support the presence of an inventive step.
Differences Between Novelty and Inventive Step
Key Distinctions
- Novelty: Focuses on whether the exact same invention has been previously disclosed.
- Inventive Step: Looks at whether the invention would have been obvious based on what is already known.
An invention could be novel but still fail the inventive step test if it only involves a small or routine change to prior art. For example, changing the color or size of a known object may not qualify as an inventive step.
Legal and Practical Implications
Failing to meet either criterion means the invention cannot be patented. During patent prosecution, many applications are rejected due to lack of inventive step even though they are technically novel.
Strategies to Demonstrate Novelty and Inventiveness
Conduct a Thorough Prior Art Search
Before filing, inventors should conduct a comprehensive prior art search to identify any existing disclosures that may affect novelty. This allows time to refine the invention or prepare strong arguments for its uniqueness.
Highlight Technical Advantages
Applicants should clearly describe how their invention improves upon known solutions. Highlighting technical effects, performance benefits, or efficiency gains can support the inventive step requirement.
Use Comparative Data
Including experimental data, test results, or comparisons with existing products strengthens the argument that the invention is not obvious and has real-world advantages.
Jurisdictional Variations in Patent Examination
United States
The U.S. uses the term non-obviousness under 35 U.S.C. § 103. The patent examiner assesses whether the invention would be obvious to a person of ordinary skill in the art (POSITA) using the Graham factors, which include the scope of prior art and differences between the prior art and the claimed invention.
European Union
The European Patent Office (EPO) uses the problem-solution approach. The examiner identifies the closest prior art, defines the technical problem, and evaluates whether the claimed invention would be obvious to solve the problem.
India and Other Jurisdictions
In India, novelty and inventive step are similarly evaluated under Sections 2(1)(j) and 2(1)(ja) of the Patents Act, 1970. Many Asian countries align their evaluation with international frameworks but may differ slightly in interpretation or procedural detail.
Examples to Illustrate Concepts
Example of Novel but Not Inventive
An inventor creates a pen with a built-in flashlight. This combination may be novel if not previously disclosed, but it might lack inventive step because combining a flashlight and a pen is seen as obvious to someone skilled in product design.
Example of Inventive but Not Novel
An inventor unknowingly recreates a device that has already been patented or published elsewhere. Even if the design involves creativity and effort, it lacks novelty and cannot be patented.
Example of Both Novel and Inventive
A new drug formulation that uses a unique mechanism to deliver medicine more efficiently could be both novel and inventive, especially if it addresses a long-standing medical challenge and delivers unexpected results.
To secure a patent, an invention must pass the dual test of novelty and inventive step. While novelty ensures the invention is not previously disclosed, the inventive step ensures it is not an obvious extension of known knowledge. Failing either test can result in the denial of a patent, which makes it essential for inventors to understand these concepts thoroughly. By conducting due diligence, presenting clear technical advantages, and anticipating examiner objections, applicants can improve their chances of obtaining strong, enforceable patent rights. Patent novelty and inventive step not only protect innovation but also drive meaningful technological progress worldwide.