Difference of Novelty and Inventive Step: Reading or Misreading of Statutory Text in Judicial Decisions

Ghayur Alam & Aqa Raza, 'Difference of Novelty and Inventive Step: Reading or Misreading of Statutory Text in Judicial Decisions' (2021) 50 1 Banaras Law Journal 119–139.

21 Pages Posted: 5 Mar 2022

See all articles by Ghayur Alam

Ghayur Alam

National Law Institute University (NLIU), Bhopal

Aqa Raza

Jindal Global Law School | O.P. Jindal Global University, Haryana, India

Date Written: 2021

Abstract

Novelty and Inventive Step are related but two different levels of enquiry under patent law. First level of enquiry, after the enquiry of patentable subject-matter, is that of novelty which is confined to one prior art reference. Second level of enquiry is that of inventive step which spreads over multiple prior art references. If claimed invention is not novel, there is no need to enquire about inventive step. Only three decisions of Supreme Court directly deal with novelty and inventive step. These decisions, however, neither explain nor lay down any test of distinguishing between novelty and inventive step. Central argument of this article is that statutory definitions of new invention (novelty) and inventive step as given under s. 2 (1) (l) and s. 2 (1) (ja) of the Patents Act, 1970 and provisions of the Indian Patents and Designs Act, 1911 are relatively explicit and clear but the relevant judicial decisions have been either silent as to distinguishing features of novelty and inventive step or have confounded the two making their distinction opaque. The argument proceeds from semantic analysis to legal analysis of the statutory text and relevant decisions of the Supreme Court on novelty and inventive step.

Keywords: anticipation, new invention, novelty, inventive step, non-obviousness, person skilled in the art, prior art, Supreme Court of India

Suggested Citation

Alam, Ghayur and Raza, Aqa, Difference of Novelty and Inventive Step: Reading or Misreading of Statutory Text in Judicial Decisions (2021). Ghayur Alam & Aqa Raza, 'Difference of Novelty and Inventive Step: Reading or Misreading of Statutory Text in Judicial Decisions' (2021) 50 1 Banaras Law Journal 119–139., Available at SSRN: https://ssrn.com/abstract=4047954

Ghayur Alam

National Law Institute University (NLIU), Bhopal ( email )

Kerwa Dam Road
BHOPAL
Bangalore, 560001, MD Madhya Pradesh 462044
India

Aqa Raza (Contact Author)

Jindal Global Law School | O.P. Jindal Global University, Haryana, India ( email )

Sonipat Narela Road, Near Jagdishpur Village
Sonipat, Haryana 131001
India

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