ASSIGNMENT
ON
Novelty
A brief introduction
Submitted To
Assistant professor
Sir M. Bilal
Submitted by
Adnan Ali
Roll # 21
st
1 Semester
LLM
Gillani Law College
Bahauddin Zakariya University, Multan
A common view:
Novelty; as a term it can be defined in several ways. For example in a common dictionary it is explained
in a way but on the other hand, dictionaries which are specially used in the field of law, it is defined
differently. However in both kinds of dictionaries one thing remains not only the same but necessary
ingredient and that is innovation because when there’s something innovative or new, it will get a distinct
place in the intellect of people. The rationale behind the patent system is not only to recognize and reward
the creativity of the inventor, but also act as an inspiration for further inventions which ultimately
contributes to the technological development of a nation and to maintain it. To find the real, patent test
of novelty is given.
In history novelty has been used for inventions of striking or unusual quality or ability. It is worth
mentioning here that the Novelty is basically a derived word which originates from Old French Novelte or
novel or novus (meanings thereby; NEW or FRESH or UNUSUAL).
Definitions:
An online simple dictionary says: “Novelty means quality of any object, to be amusing because of its
unusual design or performance.” (Google Dictionary 2017)
Black’s law Dictionary says: In order that there may be "novelty" so as to sustain a patent, the thing must
not have been known to any one before, mere novelty of form being insufficient. Seaver v. Wm. Filene's
Sons Co., D.C.Mass., 37 F.Supp. 762, 765. An objection to a patent or claim for a patent on the ground that
the invention is not new or original is called an objection "for want of novelty." (HENRY CAMPBELL BLACK
February 24, 1970).
Novelty under Section 8 of Patent Ordinance 2000:
1) An invention shall be considered to be new if it does not form part of the state of the art.
2) The state of the art shall comprise –
(A) everything disclosed to the public anywhere in the world, by publication in tangible form or
by oral disclosure, by use or in any other way, prior to the filing or, where appropriate, the
priority date, of the application claiming the invention; or
(B) contents of the complete specification and priority documents published under section 21 of
an application filed in Pakistan;
(C) traditionally developed or existing knowledge available or in possession of a local or
indigenous community.
3) Notwithstanding the provisions of sub-section (2), disclosure of a patentable invention in respect
of goods shall not constitute ‘state of the art’ if an article is exhibited at an official or officially
recognized international exhibition within twelve months preceding the date of filing of an
application for grant of patent. If later on, the right of priority is invoked, then the period shall
start from the date of introduction of the article into the exhibition. The Controller may require
proof, with such documentary evidence as considered necessary, of the identity of the article
exhibited and the date of its introduction into the exhibition.
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4) In this section references to the inventor include references to any proprietor of the invention for
the time being. (Patents ordinance 2000 Amended 2002)
Brief explanation of Section 8 Patents ordinance:
This section requires an invention to be new in the sense that the date of filing of patent application, it
should not form a part of the state of art. The “State of art” covers all stuff made available to the public
before the priority date of the invention by written or oral description, by use, or in any other way.
This means that in order to be patentable, an invention should not be found in any stuff (whether a
product, a process, information about either or anything else) which has at any time been available to the
public anywhere in the world in any way (shape/face) possible.
What is the role of novelty in Patent ordinance 2000?
Novelty is one of those most basic requirements which are necessarily required to be encountered for any
invention to become patentable under Patent ordinance 2000. Other necessities along with novelty are
mentioned hereunder.
(i) Novelty:
When there’s novelty in anything (invented) it should be new in every prospect. And to sustain a
patent the thing must not have been known to any one before, mere novelty of form is
insufficient.
(ii) Inventive step:
It simply means that the thing which is claimed to have Novelty it must have been invented.
Anything of following nature cannot be regarded as inventions.
(a) Any discovered thing which was already available naturally but not yet revealed to the public.
For example, Ruby is naturally available gem therefore any discoverer of it cannot sustain
patent for the same.
(b) Any musical work, or artistic work or scheme (with certain exceptions), etc.
(iii) Capability of industrial application:
Such invention must have ability to be utilized on industrial level. E.g. Microsoft invented
Windows operating system which was unique in the field of technology and had capability to be
utilized for industrial application.
The forgoing ingredients are considered essential for any invention to sustain patent as per the rule
described under section 7 sub section 1 of Patents ordinance 2000.
Non-Patentable Inventions:
The hereunder mentioned cannot sustain patent except where law provides otherwise.
(a) Any invention which is patentable but in larger good of public (public interest) it is necessary to
prevent patent for such invention. E.g. Polio vaccine was patentable but in larger interest of
humanity its patent was prevented.
(b) An invention which has tendency to cause serious health issues to Human or animals or plants
under national or international law.
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(c) Any surgical or breeding method used for human or animals or plants etc.
(d) Any physical change in already invented thing whereby such change no new benefit occurs in
terms of industrial usage.
Novelty as a term defined in different countries:
Indian patent act 1970 defines the novelty almost the same way as the Patent ordinance 2000 of Pakistan.
While a western country like USA defines it differently.
While in;
US law of patent, sec.101 says "Whoever invents or discovers any new and useful." as under US law, an
invention is made when the inventor conceives of the invention and then reduces it to practice. Reduction
to practice may be actual that is the invention is reduced to a tangible embodiment, or constructive,
described with sufficient detail in a filled U.S. patent application.
While looking over the law related to novelty in both the countries researchers find out that Indian law of
patent on test of novelty is wider than the US law. The Indian Patent Act, 1970, under Chapter-VI (section
29 to 34) talks specifically about Anticipation while in US law there is no provision which specifically talks
about the role of anticipation while judging the novelty. Indian Law talks about the concept of absolute
novelty which means the novelty of an object is checked considering the whole world but this type of logic
is not accepted by United States, as the law of United State favors the relative novelty concept which is
limited to within the country, where only local knowledge can destroy such novelty. (UNI assignment
2017)
Patent (Novelty) Judgments:
1. EARTHFACTOR (PVT) Ltd. VS PATENT OFFICE, IPO-PAKISTAN – [2014 C L D 897]:
In the aforementioned case Hasan Feroz, J; after perusal of material held that “the acceptance of
the patent of 3 respondents for dual number SIM seems neither an invention nor a novelty; the
process or improvement of an old process already known to the world would not fall within the
parameters prescribed by law for grant of Patent under Patent's Ordinance, 2002 as such the dual
number SIM is not patentable and would not sustain under law.” (pgil.pk 2017)
2. SMITHKLINE BEECHAM CORPORATION Vs. PHARMEVO (PVT) LTD. & CEO [P L J 2006 Karachi 65]:
In the aforementioned case it was decided by Zulfiqar Ahmad Sheikh; that, “The plaintiffs had
placed on record the process of preparation of the pharmaceutical and had incurred billions of US
Dollars upon the invention, process of manufacturing and its marketing, therefore, balance of
convenience and irreparable loss lies in favor of the plaintiffs. The presumption of the exclusive
right of use exists in favor of the plaintiffs, as the defendants rectification obligations are sub
judice. On account of infringement the patent pieces the plaintiffs are entitled to grant of relief
of injunction. There is no controversy on the point that the defendant’s products are registered
with Director General Health, Government of Pakistan. The question of infringement of the patent
is altogether a distinct question, which is required to be adjudicated under the related law. The
plaintiffs enjoying exclusive right of making selling and using novel invention throughout the
Pakistan, which has now reached to point of turning high business the balance of convenience
and irreparable loss is also in favor of the plaintiffs. For the foregoing reasons, the plaintiff’s
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application is hereby granted, consequently, the instant application is allowed and the defendants
are restrained during the pendency of the suit, manufacturing, importing or offering for sale of
pharmaceutical Rosiglitazone. (PLJ law site 2017)
Conclusion:
After going through all of the aforesaid brief examination about Novelty, it can be concluded by saying
that Novelty is a term used to differentiate the new inventions and the already available by providing the
Fresher invention a quality check so that its distinct position along with its legal security can be assured in
a specific territorial limit. And by doing so it provides a patented invention with its unique identity to be
presented in industry; for production of further revenue or fame or facility or whatever becomes its goal
as final. In Pakistan, Novelty related laws had been least functional as there’s a very small amount of
available case laws in its history. Alongside it is also an admitted fact that, The rationale behind the patent
system is not only to recognize and reward the creativity of the inventor, but also act as an inspiration for
further inventions which eventually contributes to the technological development of a nation.
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Bibliography
2017. Google Dictionary. November 23. Accessed November 23, 2017.
https://www.google.com.pk/search?q=novelty&oq=nov&aqs=chrome.0.69i59l2j69i57j69i59j69i6
0l2.1383j0j7&sourceid=chrome&ie=UTF-8.
HENRY CAMPBELL BLACK, M. A. February 24, 1970. BLACK'S LAW DICTIONARY. ST. PAUL, MINN.: WEST
PUBLISHING CO. 1968.
Amended 2002. "Patents ordinance 2000." ORDINANCE NO. LXI OF 2000. Govt. of Pakistan.
2017. pgil.pk. November 24. Accessed November 24, 2017. pgil.pk/wp-content/uploads/2015/07/Patent-
Judgements.doc.
2017. PLJ law site. November 24. Accessed november 22, 2017.
http://www.pljlawsite.com/html/PLJ2006K65.htm.
2017. UNI assignment. November 24. Accessed November 24, 2017.
https://www.uniassignment.com/essay-samples/law/the-concept-of-novelty-in-india-law-
commercial-essay.php#ftn1.
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