0

Case 1 - data are taken from 'A', an element known to prior art; said data are processed (a novel process) and results are useful for field 'B' to the extent that they meet part of its requirement.

Case 2 - same data are generated besides other data by 'C', an element and the process used therein are not known in prior art; said data are processed (a process different from as in Case 1 as well in any other prior art) and results are used for field 'B' to the extent that they meet all its requirement at much lower cost.

These observations are based on all parts I.e. Abstract, Drawing, Specification and Claims of applications related to case 1 and case 2.

Will element 'A' and process of Case 1 be prior art to element 'C' and process of Case 2 ?

Observation based on Indian Patent Act will be much appreciated. None the less, any generic view based on patent laws of any jurisdiction are welcome.

1
  • 1
    Why are you focusing on the claims in your potential prior art documents? Prior art is a disclosure in a document which might be found in any section of the document but, if it is a patent, the claims might be among the least likely to have a clear, complete teaching.
    – George White
    Nov 14 '21 at 6:54
2

I find the question a little confusing but will try to answer. The entire patent which includes Case 1 represents prior art to Case 2. The specification often includes much more and broader description than what is defined in the claims. It is conceivable that you could avoid what is described in a given claim and still be unpatentable due to what is described in the body of the patent.

So, it is quite possible that Case 2 is patentable over Case 1 given the novel processing of element C. However it is also possible that a product employing Case 2 could infringe on an earlier patent including the patent containing Case 1. Patentability does not guarantee freedom to operate.

In all cases of patentability and freedom to operate, the specifics of each case matter so I would suggest working with a patent attorney with experience in the field. I am not a lawyer so this is not legal advice.

2
  • Thanks for your responses. I have edited my question and I assume the edited version is visible to you. If you would feel to make any change to your responses it would be appreciated. @George White Nov 15 '21 at 4:15
  • @ADAdhikary Your edits really don’t change how I would answer. Is there some part of my answer you don’t understand?
    – Eric S
    Nov 15 '21 at 5:07

Your Answer

By clicking “Post Your Answer”, you agree to our terms of service, privacy policy and cookie policy

Not the answer you're looking for? Browse other questions tagged or ask your own question.