In order to establish the novelty of an invention, search for anticipation by previous publication and by prior claim in relation to the subject matter of the invention for which the patent has been applied for is conducted by the examiner in the patent and non-patent literature to ascertain whether the invention has been anticipated by previous publication and prior claiming. This is a part of office action by the Patent Office towards conducting examination of patent applications.

Novelty is determined before inventive step because the creative contribution of the inventor can be assessed only by knowing the novel elements of the invention.

An invention defined in a claim lacks novelty if the specified combinations of features have already been anticipated in a previous disclosure. In order to demonstrate lack of novelty, the anticipatory disclosure must be entirely contained within a single document. If more than one document is cited, each must stand on its own. The cumulative effect of the disclosures cannot be taken into consideration nor can the lack of novelty be established by forming a mosaic of elements taken from several documents. This may be done only when arguing obviousness. However, if a cited document refers to a disclosure in another document in such a way as to indicate that, that disclosure is intended to be included in that of the cited document, then the two are read together as though they were a single document.

The state of the art in the case of an invention is taken to comprise all matter whether a product, a process or information about either available in India or elsewhere which has at any time before the priority date of that invention been made available to the public by publication of description or by use in India.

 A matter is considered as part of the state of the art on the date it first becomes available to the public, wherever in the world that may be, and in whatever manner or language the disclosure is made. There is no limit on the age of the disclosure.

Any document is regarded as having been published, and thus forming part of the state of the art, if it can be inspected as of right by the public, whether on payment of a fee or not; this includes, for example, the contents of the ‘open’ part of the file of a patent application once the application has been published.

Prior publication does not however depend on the degree of dissemination. The communication to a single member of the public without inhibiting fetter is enough to amount to making available to the public. There is no need even to show that a member of the public has actually seen the document.

The invention is taken as lacking in novelty if information about anything falling within its scope has already been disclosed. Thus, for example, if a claim specifies alternatives or defines the invention by reference to a range of values (e.g. of composition, temperature, etc), then the invention is not new if one of these alternatives, or if a single example falling within this range, is already known. Thus, a specific example is sufficient to destroy the novelty of a claim to the same thing defined generically.