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An Introduction to Patent Novelty: How Unique Does an Invention Need to be?

By John DiGiacomo

One of the requirements for patentability is that the invention be “novel.” See 35 U.S.C. ยง102. Novelty is about whether the invention has already been patented and about what has been disclosed publicly in some manner or way. In simple terms, to meet the novelty requirement, every feature (or equivalent feature) of the invention must already have been disclosed publicly. An equivalent is a feature that has a different form than what is disclosed in the prior art or publications but that serves the same function on the same principle or in the same manner creating the same result. To use a baking analogy, in making cookies, sugar and honey would be equivalents.

If you are an inventor trying to decide if you should file a patent application, one of the first steps in the process is to conduct a novelty search. The invention may be new to you and may even be entirely conceived by you without reference to any prior art, inventions or public information. However, without being known to you, all of the features of your invention might have been disclosed in prior patent applications, trade journals, internet articles, scientific research reports, academic conference presentations and other publications. Thus, a novelty search must be done early in the process. Experienced and proven patent lawyers like those at Revision Legal should be retained to conduct the novelty search.

Another source of public disclosures are the inventors themselves who unwittingly damage their own chances of obtaining a patent. As a hypothetical, an inventor finally completes the New Device and promptly holds a media conference to announce to the world the features and benefits of the New Device. Or, alternatively, the inventor begins “shopping” the New Device around to potential investors without first obtaining signed confidentiality and non-disclosure agreements. These public disclosures can be used by the US Patent Office to reject a patent application on the basis of lack of novelty. Avoiding this pitfall is another reason to retain experienced and proven patent lawyers. However, not all is lost in our hypothetical, since, under US patent law, there is a one-year grace period to file a patent application after a public disclosure by an inventor.

From the above, we can set out the following rules for when a patent application will be rejected on novelty grounds. A patent will be denied if the invention:

  • Has been patented anywhere in the world
  • Was described in any form of publication — including patent applications and verbal publications — more than twelve months before the patent application is filed
  • Was publicly known more than twelve months before the patent application is filed
  • Has been in use for more than twelve months before the patent application is filed
  • Has been sold or offered for sale for more than twelve months before the patent application is filed

Legally, determining novelty is similar to how infringement is analyzed. That is, the “new” invention is broken down into its various elements and claims. Each of these elements/claims is compared to the prior art and what is publicly known. If every element/claim has been publicly disclosed in some manner, then the patent will be denied on novelty grounds. Conversely, if at least one element/claim has NOT been disclosed in the prior art or in some other manner, then the invention will satisfy the novelty requirement of patentability.

For more information or if you have an invention that you want to patent, contact the patent lawyers at Revision Legal at 231-714-0100.

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