Test of Novelty

Novelty means "new compared to prior art". Lack of novelty is anticipation. Novelty is in
fact a question of whether the invention has been anticipated by a previous patent, or
publication, or by use. Sec 2(1) (l) of Indina patents act. 1970 provides the definition for
“new invention” [claimed, published or publically used]. Novelty and Inventive step is a
mixed question of law and fact. Under sec. 64 patent will be revoked “where it is not novel”.
What constitutues subject matter- subject matter must be new creation or art
1. Lullubhai Chakubhai Jariwala v. Chimanlal chunilal and Co (1935)
Plaintiff was the holder of patent for improved process of teeating dried fruits, the process
was particularily applicable to the treatment of dried shell almonds and betel-nuts.
Defendants are betel-nut merchants andf plaintiff contends that defendants have been using
his process, or substantially the same process, for the treatment of betel-nuts, and have been
selling betel-nuts in the market treated by that process. Defendant argued that their process is
different.
Use of presure (pressurised with sulfur oxide) is not satisfactorily esatblished therefore no
infringment. Court held that: the two features necessary to the validity of a patent are novelty
and utility, but the real test is the novelty of the invention. Novelty is essential, for otherwise
there would be no benefit given to the public and consequently no consideration moving from
the patentee.
 2. Novartis A.G. vs. Union Of India
preventing the pharmaceutical industries from “evergreening” their patents.
Facts: In 1997, Novartis, a Swiss based pharmaceutical giant filed an application to grant
patent to an anticancer drug Glivec which is used to treat Chronic Myeloid Leukemia (CML)
and Gastrointestinal Stromal Tumours (GIST) on the basis that it invented the beta crystalline
salt form (imatinib mesylate)
 those days, India did not grant patent to pharmaceutical products and agrochemical products.
Section 3(d) of the Indian Patents (Amendment) Act, 2005 which provides  a known
substance can only be patented if its new forms exhibit “enhanced efficacy”. Madras Patent
Office refused the patent application of Novartis for its drug Glivec stating that the said drug
did not exhibit any major changes in therapeutic effectiveness.
3. Dimminaco A.G. v. Controller of Patents and Designs
The appellant had applied for a patent for the process that he had invented for the creation of
a “Bursitis vaccine” to protect poultry from Bursitis infection. The process dealt with the
creation of a Bursitis vaccine and involved the use of a live virus both during such creation
and in the final vaccine. 
application on the grounds that the claim did not meet the requirements of an “invention”
under Section 2 (j)(i) of the Act
whether there is a bar to the patentability of a process of manufacturing when the process
and/or the product involves/contains a living organism
 whether such a process of manufacture qualifies under Section 5 of the Act?
whether such a process qualifies as an invention under Section 2 (j) (i) of the Act?
mere fact that a product contained a living organism would not render the manner of its
manufacture un-patentable. The patentability instead would have to be determined through
the test of novelty and usefulness.
mere fact that a product contained a living organism would not render the manner of its
manufacture un-patentable. The patentability instead would have to be determined through
the test of novelty and usefulness. 
Vendibility Test
whether the process leads to an improvement, restoration, production, or preservation of such
a product. If the invention, in the nature of a manufacturing process, serves any of the
aforementioned purposes, the test for vendibility would have been met. 
4. KSR International Co. v. Teleflex Inc.
Teleflex (Plaintiff) sued KSR (Defendant) for patent infringement based on an electronic
sensor that was added to an existing pedal design by Defendant.  Defendant argued the
Plaintiff’s patent claim was invalid because the addition was obvious.
PHOSITA (Person hvaing ordinary skill in the art).
In order to determine the obviousness of a patent claim, the courts must consider the prior art,
the differences between the prior art and the subject matter of the claim, and the ordinary skill
level required of a person in the subject matter of the claim before considering secondary
factors and the test for teaching, suggestion, or the patentee’s motivation.{TSM test}.
No secodary factor enough to overcome non-obviousness.
5. Graham v. John Deere & Co.
Graham factor
Graham (Plaintiff) filed suit against Defendant claiming patent infringement on a device
which consisted of old mechanical elements that absorbed shock from plow shanks as they
plowed through rocky soil.
A case-by-case analysis of the scope and content of the prior art, the differences between the
prior art and the claims at issue, as well as the level of ordinary skill in the applicable art are
required to determine the non-obviousness of a claimed invention as to a prior art.
The Fifth Circuit held that a patent was valid, ruling that a combination was eligible for
patent when it produced an “old result in a cheaper and otherwise more advantageous way.
The Eighth Circuit said the patent was invalid in the present case as there was no new result
or combination.
general level of improvement and originality needed in order to sustain a patent did not
change.
The patent is therefore invalid.
Primary factors

a. Content and scope of prior art. should be regarding the same field of invention.
b. Multiple prior art pertinent in that field should be looked inot
c. Level of ordinary skill in the concerned art that is what would have been considered
obvious by a person of ordinary skill in that particular art.
Secondary Factors

6. Bishwanath Prasad RadheyShyam v. Hindustan Metal Industries

According to a preferred feature of the invention disclosed in the patent, the pressure end
of the spindle was rotatably mounted and for that purpose it comprised an independent
piece engaged by a hollowed end in a spindle, said hollowed end being preferably fitted
with ball bearings to enable the said independent piece to revolve with friction when it
was in contractual relationship with the utensil . The patent disclosed that the independent
piece had a forward pointed end or a blunt end, which was firmly held against the utensil .
The validity of the patent was challenged on the ground of lack of novelty and inventive
step.
 inventive step by stating that in order to be patentable an improvement on something
known before or a combination of different matters already known, should be something
more than a mere workshop improvement and must independently satisfy the test of
invention or inventive step .
patentable the improvement or the combination must produce a new result, or a new
article or a better or cheaper article than what was already existing . 
the court stated that the patented invention was merely an application of an old invention,
known for decades before. traditional purpose of scraping and turning utensils, with a
slight change in the mode of application, which was no more than a Workshop
improvement .
7. Bajaj v. TVS
Bajja the plaintiff sued TVS for patent infringment concerning technolgy of improved
internal combustion engine.
Court held bajaj enjoys exclusive usage of patent. Plug centirc v. valve centric.
respondents have the right to sell their product 
he judgment was based on the observation that infringement of patent has said to have
happened when there are no improvements and exact design or technology has been
copied, whereas in this case, substantial improvements were made by the
respondents.
The subject matter of DTS-I technology. The case is related to the use of twin spark
plugs for effeicient combustion of lean air fuel mixture in small bore ranging from
45mm to 70mm internal combustion engine working on 4 stroke principle.

8. Enercon (India) Ltd. v. Alloys Wobben (Pri)

application for revocation of a patent granted to Wobben.
A computer programmer is used for the working of wind turbines.
Court stated that the computer program that performs the technical process such as
controlling wind turbines, cannot be called the computer programms per se, despite
the fact that the wind turbines cannot be controlled manually and require computer
technology to do so.
9. Dhanpath seth v Nilkamal Plastics
The patent was a device which allowed the manual hauling of agricultural produce. It was
granted a patent for its specifications as well as design. The inventor of the device was
Mr.Dhanpat Seth. The defendants, Nilkamal Plastic Ltd. are manufacturers of various
plastic products and supplied its products in various states across India. The defendant
started manufacturing and selling a device which was similar to the plaintiffs patent and
hence this suit.
 Court: The court observed that the patented product was bearing resemblance and
similarity to the traditionally used device Kilta and that it is a mere discovery of a new
form of a known substance. Further, the plaintiffs could not establish that the invented
device results in the enhancement of efficacies of the traditionally used device Kilta. The
invention falls within the open coinage of Sec 3(p) of the Patents Act and is not an
invention.
Section 3 (p) an invention which in effect, is traditional knowledge or which is an
aggregation or duplication of known properties of traditionally known component or
components.
Being traditional knowledge, the factum that the invention is an inventive step is negated.
10. Roche v Cipla
Both Roche and Cipla are based on the compound that goes by the name Erlotinib
Hydrochloride.
February 2007, Roche after claiming that it had been granted a patent for ‘Erlotinib’
started selling the drug under the brand name TARCEVA.
January 2008, it was reported that Cipla is planning to launch a generic version of
‘Erlotinib.’ This made Roche initiate infringement proceedings against Cipla.

 The case was then taken to the Division Bench where the case went in favor of
Roche.
Roche from the very beginning of the suit claimed that Erlocip is Erlotinib
Hydrochloride, but the claim for a patent made by Cipla was Polymorph B of the
compound Erlotinib Hydrochloride.
On this, the Judge held that-

“Any process involved in making Polymorph B of Erlotinib Hydrochloride would involve the
preparation of Erlotinib Hydrochloride itself
(guidline for patent infringment)

11.Garware Wall Ropes v. AI Chopra Engineers and Contractors (Rounak)

 12. Park Davis v Mulford 

Jokichi Takamine was the first to isolate a certain purified substance from an animal’s
suprarenal gland. Takamine obtained a patent and assigned it to Parke-Davis & Co.
(Parke-Davis) (plaintiff), which began selling the substance as a medicine. H.K. Mulford
Co. (Mulford) (defendant) sold a similar product. Parke-Davis brought suit against
Mulford for patent infringement.

It is not enough to just discover an unknown plant or animal or mineral.This would

probably not be patentable today.Things that cannot be patented: Laws of nature,
scientific/mathematical formulas, discoveries, plants and animals (unmodified),
abstract ideas.
13. State Street Bank & Trust Co. v. Signature Financial Group, Inc. (1998

Subject Matter in the case is a data processing syste. The question arises whether
holding that the transformation of data, representing discrete dollar amounts, through
a series of mathematical calculations, by a machine, into a final share price, does not
constitute a practical application of a mathematical algorithm, formula or calculation.

Business methods are patentable.A mathematical algorithm is patentable if it is

applied in a useful way and produces a tangible result.

Yes. This transformation constitutes a practical application of a mathematical

algorithm, formula, or calculation because it produces a useful, concrete, and tangible
result. Hence, the transformation is eligible subject matter because it passes the test
for utility.

14. Funk Brothers v Kalo Inoculant Co ( Novelty)

The patent concerned an inoculatant for leguminous plant.

The patentee discovered that there are strains of each species of root nodule bacteria
which do not exert a mutually inhibitive effect on each other. Thus, he was able to
provide a mixed culture of Rhizobia capable of inoculating plants belonging to several
groups. Kalo exploited the claimed invention by selling multi-purpose packages
containing a mixture of different species of Rhizobia suitable for different plants

facially trivial implementation of a natural principle or phenomenon of nature is

not eligible for a patent

15. Diamond v. Chakrabarty

Respondent filed a patent application relating to his invention of a human-made,

genetically engineered bacterium capable of breaking down crude oil, a property
which is possessed by no naturally occurring bacteria. 

Held A live, human-made micro-organism is patentable subject matter,  The court

held that respondent's micro-organism constituted a "manufacture" or a "composition
of matter" within the meaning of 35 U.S.C.S. § 101 and thus qualified as patentable
subject matter. The court found that respondent had produced a new bacterium with
markedly different characteristics from any found in nature and which had the
potential for significant utility.

Mayo v. Prometheus

Respondent, Prometheus Laboratories, Inc. (Prometheus), is the sole and exclusive

licensee of the two patents at issue, which concern the use of thiopurine drugs to treat
autoimmune diseases. When ingested, the body metabolizes the drugs, producing
metabolites in the bloodstream. Because patients metabolize these drugs differently,
doctors have found it difficult to determine whether a particular patient's dose is too
high, risking harmful side effects, or too low, and so likely ineffective.

The Doha Declaration

The multiple controversies concerning access to drugs, in particular in the context of

the HIV/AIDS epidemics put increasing pressure on the WTO to address the issue
even before considering the possibility of an amendment or revision of the TRIPS
agreement. This eventually led the 2001 Ministerial conference to specifically address
the question of the place of health in the TRIPS agreement. The result of the WTO
deliberations is a ministerial declaration adopted at the end of the Doha meeting. This
Declaration does not constitute an amendment of TRIPS and only seeks to shed light
on acceptable interpretations of the treaty. It constitutes a first step towards the
recognition that intellectual property rights issues cannot be discussed in isolation
from health concerns.

The Declaration’s main importance stems from its recognition that the existence of
patent rights in the health sector does not stop states from taking measures to protect
public health. More specifically, it affirms that TRIPS should be ‘interpreted and
implemented in a manner supportive of WTO Members' right to protect public health
and, in particular, to promote access to medicines for all'[12]. The Declaration is
important for developing countries insofar as it strengthens the position of countries
that want to take advantage of the existing flexibility within TRIPS. The Declaration
does not open new avenues within TRIPS but confirms the legitimacy of measures
seeking to use to the largest extent possible the in-built flexibility found in TRIPS. In
other words, it constitutes a confirmation of the position of countries like South Africa
and Brazil which sought to go beyond a narrow interpretation of TRIPS in their search
for ways to tackle their rampant HIV/AIDS crisis. Further, it provides a basis for
arguments in case of a dispute at the level of the WTO dispute settlement
mechanism[13]. Finally, it grants least developed countries a further ten years to
implement their patent obligations with regard to medicines.

While the Doha Declaration has contributed to softening the tone of international
debates concerning access to medicines in the context of TRIPS, it stops short of
addressing the fundamental question of the relevance and need for patents on drugs in
developing countries and in particular in least developed countries. Beyond the
unresolved question of patentability in the health sector, the Declaration also fails to
provide answers to more practical questions. This concerns, for instance, the case of
the prohibition for a country like India to compulsorily license a drug mainly to export
it to other countries. This has been contentious because the possibility to compulsorily
 license a patented drug is only available in situations where a country has a
manufacturing basis of its own. If exports were not permitted in this context, this
would mean that most sub-Saharan African countries would not be able to take
advantage of alternative sources of medicines. This points out to one of the major
challenges that all developing countries will face in the future. If existing
manufacturing capacity in countries like India was to substantially reduce, this would
have an impact not only for India but also for a number of other countries which do
not have the capacity to manufacture drugs and would therefore be totally dependent
on supplies from developed country manufacturers. The Doha Declaration has not
tackled this problem but at least required the TRIPS Council to provide a solution to
this problem by the end of 2002. This constitutes one of the important on-going
debates in the context of patents in the health sector.

Rights of a Patentee (U/d Patent act)

Right to exploit the Patent

When the new invention is a product, the Patentee has the exclusive rights to use, make,
import, or sell for these purposes related to an invention in India. On the other hand,
when the invention of the inventor is a procedure or process of manufacturing of any
article or substance, the right to exploit means the exclusive right exercise or use the
procedure or method in the territory of India.

Right to Grant License

The Patentee of a Patent is given the right to grant license or transfer rights or enter
into some arrangement for some consideration. The assignment or license to be valid and
legitimate it is required to be in writing and should be registered with the Controller of
Patent. Unless a document of assignment of a Patent is not registered, it is not admitted as
evidence of title of the Patent, and such a rule is applicable to the assignee, not the assignor.
(As per Section 69(5) of the Patent Act, 1970)

Right to Surrender
By giving notice in the prescribed manner, the Patentee of a Patent has the right to
surrender a Patent at any time and at his/her own discretion. The advertisement for
such an offer of surrender is required to be done in the Journal. The publication is done
to give an opportunity to the people to oppose the offer of surrender of the Patentee. This is
done when the Patentee apprehends his/her non-performance of the Patent in the future and
upon which he/she decides to surrender the Patent.

Right to sue for Infringement

The Patentee has the right to sue for Infringement of Patent in District Court has the
jurisdiction to try the suit.

Right to Use and Enjoy Patent

The Patentee of the Patent has the exclusive right to exercise, make, utilize, convey or offer
or the patented substance or article in India or to practice or utilize or the process or
techniques associated with the invention. Such rights can be exercised either by the Patentee
himself/herself or by his/her licensees or agents.

Duty/ Obligations of a patentee

Duty to Disclose
Sec 8 of the Patent Act, 1970[1], accomplishes the obligation to disclose of the Patentee.
Section 8(1) of the Patent Act, 1970, tells that the Patentee has an obligation to disclose all
required data related to the remote uses of comparative or same invention documented by
him/her or through him/her or through someone by him/her at the time of applying or within
6 months of applying.

The Patentee of a Patent is required to record an announcement of all the listed particulars
viewing the applications and, in addition to the above, an endeavor to disclose all the points
of interest of any subsequent applications that might be documented at the future stages.

Section 8(2) of the Patent Act, 1970, puts an obligation on the Patentee to provide all the data
required by the Controller of Patent with regards to the relating of any remote applications at
whatever point demand is made by the Controller of Patents within a time period of 6 months
of such a demand by the Controller of Patent. The first part of the obligation of Patentee
begins when a man records an application of Patent. On the other hand, the second part
begins after a demand is made by the Controller of Patents under the Patents Act, 1970.

Duty to Request for Examination

Not like other Intellectual Property Rights, the Registration process of Registration of Patent
does not accommodate any kind of programmed examination of the grant of Patent
application. In the procedure above mentioned, as indicated by Section 11(B) of the Patents
Act, 1970, the obligation is thrown on the Patentee himself/herself to ask for the Controller of
Patents to look at the growth or development connected for Patent.
Duty to Respond to Objections
The Controller of Patent before accepting the examination request passes it to the analyst who
looks at the growth and gives a report to the Controller of Patent known as the First
Examination Report (FER). On certain cases there may be some protests which will be
brought up in the First Examination Report, it is the right of Patentee to reply to such
opposition complaints and consent to the corresponding within a time period of a year of the
issuance of the First Examination Report (FER) falling which the application of the Patentee
will be considered to be surrendered by the Controller of Patent.

Duty to clear all Objections

It is the obligation of the owner of the Patent to respond to the raised objections as well as to
clear and remove each one of the raised objections and, in addition, certain oppositions raised
against his/her invention. In the event that the Controller of Patent has not fulfilled he/she, it
may also require a meeting also. Furthermore, it is the obligation of the owner of Patent to go
for a consultation and clear all the objections and, in addition, oppositions, if are raised any,
against the invention of the inventor.

Duty to Pay Statutory Fees

The Patentee has an obligation to pay all the statutory expenses required to get a grant of a
Patent in the process of Registration without failure generally, his/her application for the
grant of Patent won’t be managed. Sec 142 of the Patent Act, 1970, accomplishes the
provisions recognized with payment of charges and, in addition, the consequences for non-
payment of such prescribed fees.

After this process is imitated to and the Patentee of Patent clears every one of the restrictions
and protests raised against his/her invention, if the Controller of Patent is fulfilled, he/she will
grant a Patent to the invention and publishes it in the Journal, or generally, the Controller
rejects such a Patent.