What makes an invention novel?
Do you think I can patent this? Is it a novel invention?
This is a question that I get from inventors calling me all the time.
What does it take for something to be patentable? The big hurdles the US patent law puts in place are the answer to this question. One of these hurdles is called “Novelty.”
You’ll hear this word if you’re involved in any patent application. Everyone who files a patent application hopes to be able to describe their invention as novel. But what does it mean for an invention to be novel?
I’ll give you a hint. It’s one of the easiest questions that we have to answer when trying to get a patent.
Where does novelty fit into patentability?
Novelty comes out of Section 102 of the Patent Act, and it’s one of the requirements that govern whether your invention can be patented or not.
Novelty has a cousin—obviousness—which is definitely the rogue teenager of the crew that we’ll talk about in a later post.
It also has a distant wannabe cousin called subject matter eligibility—which should be wholly unrelated to Novelty, but that’s the world we live in with a Supreme Court that really should just fix the problem it created for this area of the patent law and then stay away from it.
Yes, I have opinions, and if you look in the Department of Commerce’s records, you’ll find them.
But I digress. We’ll cover subject matter eligibility in a later post.
Let’s get back to novelty.
Prior Art References: How what’s already out there factors into figuring whether you have a novel invention.
Before we talk about what it means to be novel, we have to talk about Prior Art References.
While it may sound like a word salad—a frequently encountered thing in patent law—a prior art reference is simply any one thing that’s in existence up to the day you file your patent application.
Frequently, we talk about a prior art reference as another patent or patent application—since they’re the easiest to search. In some cases, this can include another’s patent application that became public after you filed, but was filed before yours. But prior art references can also include offers for sale—like a product being offered for sale at a store or on a website, publications like books, or really any one thing that is available to the public prior to your filing date.
Now I’m not referring to combinations of different things, a prior art reference in the singular sense, for lack of a better term, refers to one distinct document or thing.
A often-overlooked danger is that prior art references can include not only other people’s patents, patent applications, offers for sale, publications, or other publicly accessible thing, but also YOUR OWN patents, patent applications, offers for sale, publications, or other publicly accessible thing. That’ll become clear in a moment.
Now that we’ve figured out what a prior art reference is, let’s keep going.
Claimed Invention: What is the scope of what we are trying to claim as a novel invention?
We have another term we have to cover before getting to novelty: Claimed Invention.
Your claimed invention is the bounds of what we claim as your invention in your patent application. That may sound circular, but that’s what the U.S. Patent Act says:
I like to describe this using a metaphor of a backyard with a fence around it. You may have built a few different blades of grass in that backyard as your prototypes. But there are many other similar blades of grass (or variations) within your backyard.
We design patent claims to be like the fence around all of the blades of grass. By doing this, we try to prevent workarounds—or “design-arounds”—by a copycat competitors that are making minor changes.
So, your claimed invention is usually much broader than your prototypes.
Getting to novelty: when can we say an invention is a novel invention?
Now. I think we have everything we need to talk novelty.
A claimed invention is novel if there is not one single prior art reference that discloses each and every element of the claimed invention.
In other words, a government patent examiner will look for a complete disclosure of your claimed invention within each relevant prior art reference that they find. If the examiner cannot find all of the elements of your claimed invention within a single prior art reference, your invention is novel.
I mentioned before that prior art references can include your own prior art references, and this is dangerous.
Two reasons.
First, I get a lot of invention disclosures or application markups highlighting future developments. This is patent profanity—if you discuss what you have in the works, you may inadvertently prevent yourself from being able to patent it.
Second, the United States does give you a 1-year grace period to apply for a patent after you publicly disclose your invention or offer it for sale. The rub is that most countries do not. Since patent law is national law, this means that you may be able to get a patent in the United States, but your own prior art reference may prevent you from getting a patent in, for example, say, Europe, even with the same filing date.
The moral of the story is if patenting is on your radar, it’s best to talk to a qualified patent attorney before you go public or offer anything for sale.
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See you soon!
