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To be granted a patent, an invention is required to

  • be novel
  • result from an inventive step
  • have commercial applicability

Why "novel"? Every inventive step will, necessarily, lead to something "new", no?

I can understand, that not everything that is new, is based on an inventive step.

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2 Answers 2

The way to think of the criteria is that the test for novelty comes before the test for inventive step (in U.S. this is expressed as "non-obviousness" which is similar but not exactly the same as what most of the rest of the world calls inventive step.) Is it new? Is a clearer question. After you pass that then the harder and more subjective question of obviousness come up.

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As George has mentioned, novelty aspect of the invention will be examined first before examining the inventive step of the invention.

The proposed invention will be announced as novel, if it has not been anticipated by information available in public domain prior to the priority date (first filling date) of a patent application for the proposed invention.

Not every inventive step will lead to something new. In a scenario where the inventive step is new and the end product is same as what already exists, then the inventive step has to be protected.

Example: A product-by-process claim is considered to be novel only if the product mentioned in the preamble is novel. For example, a product-by-process claim claims a product X prepared by a process Y. Product X is known in art, whereas the process Y for manufacturing the product X in new. Even though the process Y is not known in the art, the product-by-process claim will lack novelty because the product X is known in the art.

It is therefore advisable to claim a process for obtaining the product by a process claim, rather than claiming the product using a product-by-process claim.

You may refer to this link to get an insight on protecting a product by process claims: http://www.invntree.com/blogs/understanding-product-by-process-claims

You may refer to this link to get an insight on the importance of drafting a patent specification by patent professionals: http://www.invntree.com/blogs/why-should-patent-specifications-be-drafted-by-patent-professionals

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