Why you need to understand the criteria of patentability?

The criteria of patentability are more or less consistent across jurisdictions. The patentability criteria in India or other jurisdictions such as US or Europe are primarily based on the logic that your invention should be a unique solution to a particular technical problem. It is critical to understand the criteria for patentability to know what qualifies for patent protection in India and other jurisdictions.

What are the criteria of patentability and what qualifies for patent protection?

There are 3 main criteria for patentability:

Let’s look at these 3 criteria in more detail:

Novelty in patent law:

The literal meaning of novelty means ‘something new’. Novelty in patent law also has the same meaning but in the context of inventions. Novelty in patent law, thus, means that your invention should have at least one new element. In simpler words, there should be at least one distinction with respect to prior art. The next question is what is a prior art.

What does prior art mean in patent law?

Prior art in patent law means any published literature or evidence that is relevant to your invention. More specifically, if the essential features of your invention are disclosed in any publication, the publication becomes a prior art for your invention. Prior art can include any publication such as patents (granted/yet to be granted/abandoned), or non-patent literature (published research papers/blog articles/media reports/videos etc.). The easier way to understand the concept of prior art is anything that is the public domain and disclosing features of your invention.

Therefore, to establish novelty of a patent application, you need to identify at least one feature which is not disclosed by the prior art.

Inventive Step in patent law

The definition of inventive step varies across jurisdictions. However, a generally accepted meaning of inventive step is that an invention is not ‘ obvious ‘ to a person skilled in the art in view of the available prior art. In layman terms, obviousness essentially implies that the invention would strike a person skilled in the art as a matter of common sense or general knowledge without doing any significant research or experimentation.

Let’s seggregate the nature of technical problems into 2 categories to understand obviousness — Break-through innovations and Incremental innovations.

1. Break-through innovations — In case of break-through innovations (a tin can, invention of electricity, steam engine etc.), a technical problem is either not solved before or very few successful attempts have been made to solve it. Here, a successful solution can immediately be non-obvious if it provides a significant technical advantage that was not experienced before. The obviousness may not necessarily impose a big challenge in break-through inventions because of rare prior-art availability.
2. Incremental innovations — Most innovations we experience are incremental innovations. They build up in small increments on a break-through innovation. In this case, a technical problem is already known and obviousness poses a bigger challenge than break-through innovations. In this scenario, an invention is considered obvious if on considering the available prior art, a skilledperson (without knowing about your invention), would logically arrive at your invention as a solution to the same technical problem you are solving. In other words, your invention would strike as a matter of common sense or general knowledge to the skilled person in your technical domain, without carrying out any substantive research or experimentation.

In a simple example, imagine we are in the 1800’s and the world only knows about a static chair with 4 legs as the latest technology in seating. At that time, Charles Darwin was the first to think of adding wheels for maneuverability of this chair to access different parts of his room without getting up. At that time, this resulted in a significant technical advantage of moving the otherwise static chair around at human will and with little manual effort. This can be considered as an example of non-obviousness in case of a break-through innovation (not much prior art).

However, as time went by, another problem emerged that users had to rotate their body around while sitting, if they had to access something that was not directly to their front. The addition of a swivel mechanism design to the moving chair solved this problem. Given the existing moving chairs at that time, the mechanical intricacies of a swivel mechanism could not be obviously thought of just as a matter of common sense and without any experimentation. Thus, this can be considered as an example of non-obviousness in incremental innovation.

You have to apply similar principles in your field of technology to identify whether it is a break-through invention or an incremental invention. If you don’t know, assume it is an incremental invention. Establishing inventive step in case of incremental inventions, however, is harder compared to break-through inventions. In case of incremental inventions, where the problem is already known and additional solutions exist (you can find this out by doing a prior art search), try to identify a solution that is not obvious to a person skilled in the art.

Industrial Applicability

Industrial applicability means that the invention must be applicable to a technical domain. One way to interpret is that your invention solves a technical problem that relates to an industry. While there are no industry-specific exceptions where you are not allowed a patent, you may want to consider exceptions to patentability in your country before you start ideating in a specific industry. For example, in India these are the exceptions to patentability (this is what is patentable in India).

Why is the criteria for patentability important?

Patentability criteria in different countries is a necessary requirement to get a patent granted. This means that a patent application must satisfy all the above 3 criteria for patentability — novelty, inventive step and industrial applicability.

For example, if your invention is novel but lacks an inventive step, a patent would not be granted. Between all the 3 patentability criteria, it is relatively easier to prove that an invention is industrially applicable compared to establishing novelty and inventive step. Among novelty and inventive step, it is easier to establish novelty because it only requires you to demonstrate the distinctive aspects over prior art. However, establishing the inventive step is a bit of challenge because it is subjective. This is where as an inventor, you must focus before filing a patent application.

As an inventor, you should ensure that a thorough prior art search is done before you file a patent application in India or any other country. If you are able to establish differences over the prior art, it means that the invention is novel. You must ensure that these differences are also non-obvious (they include inventive step). In addition to establishing novelty and non-obviousness, try to include several fall-back options in the patent application. Read this post to understand how to give a concrete form to your invention before filing the patent application.

There are several additional criteria for patentability but the above-discussed ones are the most critical requirements for any patent. Keep following this blog to stay up to date with various ways that help you convert your idea into a great patent application.

Hope this post helps you in understanding the requirements to file a patent application. Do leave below any comments or thoughts!

Originally published at https://patentgrasp.com on April 3, 2021.