One of the requirements for patentability is that the invention be “novel.” See 35 U.S.C. §102. 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.

Novelty vs. Non-Obviousness: Two Different Requirements

Novelty and non-obviousness are separate patentability requirements. Novelty under 35 U.S.C. § 102 asks whether the claimed invention has been previously disclosed in a single prior art reference — a patent, publication, public use, or on-sale event before the effective filing date. If a single reference discloses every element of the claim, the claim is anticipated and lacks novelty. Non-obviousness under 35 U.S.C. § 103 allows the examiner to combine multiple prior art references and ask whether the claimed invention would have been obvious to a person of ordinary skill in the relevant field. An invention can be novel (not anticipated by any single reference) yet still be obvious (a predictable combination of known elements).

The obviousness analysis received its most significant modern treatment in KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), in which the Supreme Court rejected rigid formalism and held that an examiner can rely on the combination of known elements using known methods to yield predictable results as grounds for an obviousness rejection. KSR made it meaningfully easier for examiners and challengers to reject or invalidate patents on obviousness grounds and remains one of the most consequential patent decisions of the past two decades.

Conducting a Proper Prior Art Search

A thorough novelty search should cover at minimum: the USPTO’s patent and patent application database (patents.google.com and the USPTO’s PatFT and AppFT systems); international databases including the European Patent Office’s Espacenet and WIPO’s PatentScope; and non-patent literature including peer-reviewed journals, conference proceedings, industry publications, and product catalogs. Professional patent searches use classification codes — both the Cooperative Patent Classification (CPC) system and the USPTO’s USPC system — in addition to keyword searches. Keyword-only searches miss patents that describe the same concept using different terminology, and a comprehensive classification-based search can surface references that change the prosecution strategy before a single dollar is spent on claims drafting.

The Duty of Candor and Disclosure to the USPTO

Inventors and their attorneys owe the USPTO a duty of candor and good faith under 37 C.F.R. § 1.56. This duty requires disclosure of all information known to be material to patentability — including prior art known to the inventors or their counsel. Intentional failure to disclose material prior art constitutes inequitable conduct, which, if proven, renders the entire patent unenforceable. The Federal Circuit addressed the standard for inequitable conduct in Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011) (en banc), requiring proof of both materiality and specific intent to deceive the USPTO. The remedy — unenforceability of the entire patent — can destroy an otherwise valid and infringed patent. Never withhold prior art from your patent attorney, even if you believe your invention clearly distinguishes over it. Contact the patent attorneys at Revision Legal at 231-714-0100.