Patentability: novelty, inventive step, industrial applicability, exclusions
The three tests
Novelty is assessed against the prior art as of the priority date. Israel applies an absolute novelty approach: publication or use anywhere can destroy novelty, subject to statutory exceptions. Inventive step asks whether the invention would have been obvious to a person skilled in the art in light of the prior art, without hindsight. Industrial applicability requires that the invention can be made or used in industry, including agriculture.
Exclusions
Not every useful idea is patentable. Discoveries, scientific theories, mathematical methods, aesthetic creations, schemes and methods for mental acts, games or business, and presentations of information are not inventions. Methods of treatment of the human or animal body are excluded, but product claims and certain medical-use or manufacture claims may be available. Inventions contrary to public order or morality are refused. The examiner may also object to claims that are not technical or not sufficiently disclosed.
Worked example
A claim recites: 'A method of treating hypertension in a human by administering compound X.' The method directly treats a human body and is excluded. A claim to 'compound X for use in the manufacture of a medicament for treating hypertension' is drafted as a manufacture-use claim and may be allowable if novelty and inventive step are met. A claim to a new crystalline form of X is assessed as a product claim.
Traps
Novelty and inventive step are separate objections; a document that discloses the elements does not automatically make the claim obvious. Avoid combining references with the benefit of the applicant's own disclosure. Do not treat a business method as patentable merely because it runs on a computer; look for a technical contribution.