Summary of "Lecture 08: Roadmap for Patent Creation - Novelty by Prof. Gouri Gargate"

Module 3 (Week 2) — Novelty (Patentability)

Brief summary

This lecture explains the patentability requirement of novelty: what it means, how it is assessed, what inventors must do to preserve novelty, how examiners check novelty, and a few illustrative legal points/cases.

Main ideas and concepts

Patentability criteria
- An invention must satisfy three principal requirements: novelty, inventive step (non-obviousness), and industrial application. This module focuses on novelty.
Indian Patents Act — key statutory definitions (as cited in the lecture)

Invention (sec. 2(z) as quoted in the video): a “new product or process involving an inventive step and capable of industrial application.” This breaks down to (1) new product or process = novelty, (2) inventive step = non-obviousness, (3) capable of industrial application = industrial applicability.

Inventive step (sec. 2(j) as quoted): a feature involving technical advance compared with existing knowledge or economic significance, and not obvious to a person skilled in the art.

New invention (sec. 2(l) as quoted): an invention/technology that has not been anticipated by publication in any document or used in the country or elsewhere in the world before the date of filing the patent application with complete specification — i.e., the subject matter must not have fallen into the public domain or form part of the state of the art.

Novelty is global
- Assessed against the global “state of the art” — determined by examining published literature and patent documents worldwide.
Prior art and anticipation
- Prior art = any evidence that the invention was already known. It need not be commercially available; a mere description, demonstration, or historical/traditional use can be prior art.
- A prior art reference is “anticipatory” if it discloses all the subject-matter of the claimed invention (i.e., it contains the same information as the claim).
Patent searching
- Exhaustive patent and literature searching is essential because many technical disclosures appear only in patent documents. A search report (positive or negative) strongly influences the chance of grant.
First-to-file rule
- Worldwide practice favors first-to-file: inventors should file early and before any public disclosure or commercialization.
Disclosure and secrecy obligations for inventors
- Do not publicly disclose the invention before filing: avoid journal publications, media/web disclosures, magazine articles, exhibitions, public displays, or sales that place the invention in the public domain.
- Maintain secrecy and use confidentiality measures. The Act may provide limited remedies if disclosure occurs, but proactive secrecy is recommended.
- Clinical trials or regulated testing (medical field) are typically acceptable but must be managed so they do not destroy novelty.
How examiners assess novelty (process summary)
1. Consider all documents published before the filing date: patents and non-patent literature (research papers, magazines, newspapers, web postings).
2. Search available patent databases across jurisdictions.
3. If a prior art document discloses all elements of the claimed invention, novelty is destroyed (anticipation).
4. Collating extracts from multiple documents (“mosaic”) to reconstruct the claimed invention is generally not treated as a single anticipatory document — aggregation of scattered teachings usually does not constitute direct anticipation (it may be relevant under inventive step/obviousness instead).
Case-law and legal points mentioned
- Public accessibility: a document accessible to the public (even if not actually read) can destroy novelty — availability/accessibility is sufficient.
- Mosaic/collation: extracting bits from several documents and piecing them together does not usually form a proper single anticipation — the prior art must convey the same information as the applicant’s specification.
- Examples referenced in the lecture: an unnamed decision reinforcing the accessibility test; a controller’s decision stating aggregation of extracts is not a proper anticipation; Crompton Greaves vs. BHEL — illustrating the importance of a search report and how a positive search report can support grant (subject to other criteria).
Practical conclusion
- Novelty is a global concept. Thorough prior-art searching and early filing before any public disclosure or commercialization are essential to preserve and establish novelty.

Detailed checklist / practical steps to preserve and establish novelty

Before any public disclosure or commercialization
- File a patent application (provisional or complete) before any non-confidential disclosure.
- Maintain strict secrecy: avoid press releases, web postings, social media, magazine articles, posters, uncontrolled conference talks, and public displays/exhibitions.
- Use confidentiality agreements (NDAs) when discussing the invention with collaborators, investors, or vendors.
- Limit demos; use controlled demonstrations or NDAs.
- For clinical trials or regulated testing, manage reporting so inventive details are not openly published before filing.
Investigative / preparatory steps
- Conduct an extensive global patent and non-patent literature search to identify prior art and evaluate novelty.
- Analyze search results to determine whether any single prior-art reference discloses all claimed features (anticipation) or whether a combination bears on inventive step (obviousness).
- Prepare clear, well-drafted specification and claims that distinguish over identified prior art.
- Obtain and use a patent search report to refine claims and prosecution strategy.
- Document dates, lab notebooks, and confidentiality arrangements to support priority if disputes arise.
- Consult a patent attorney/agent early to draft claims and advise on filing strategy (first-to-file priority).
If disclosure already occurred
- Review the nature and timing of the disclosure immediately.
- Seek legal advice about possible remedies or statutory exceptions in your jurisdiction; in many cases public accessibility will have destroyed novelty, so prevention is preferable.

Notes, uncertainties, and transcript issues

Several names and case citations in the subtitles/transcript are garbled or unclear (e.g., unintelligible case names). The lecture refers to case-law and controller decisions but the exact citations are not reliably transcribed here.
The video cites Oxford Dictionary, a “philosopher dictionary,” and the European Patent Office for definitions — these were used for conceptual clarification.
Where the transcript is unclear, this summary captures the legal principle described rather than quoting potentially mistranscribed case names.

Speakers and sources referenced

Lecturer: Prof. Gouri Gargate — presenting the module “Roadmap for Patent Creation — Novelty.”
Example/hypothetical: “Akash” (a 16‑year‑old researcher) used to illustrate publicity/commercialization risks.
Referenced institutions/sources:
- Indian Patents Act (secs. 2(z), 2(j), 2(l))
- Oxford Dictionary
- European Patent Office
- Mentioned legal examples/cases (some names unclear) and the Crompton Greaves vs. BHEL dispute.
- An unnamed controller’s decision discussing mosaic/collation.

Optional deliverables I can prepare

Cleanly extract the statutory definitions (quoted) and format them for use in a filing checklist.
Produce a one-page “Do before you disclose” checklist for inventors based on this lecture.

If you want either deliverable, tell me which one (or both) and any jurisdictional focus (e.g., India, US, Europe) you prefer.