You need to understand patent novelty if you want to be able to put together a strong intellectual property strategy and plan. Novelty is, simply put, the cornerstone of U.S. patent law.

I hear it often from inventors that there is nothing out there like their invention. So, it’s helpful to learn exactly how the patent law answers the question of whether there is “anything out there” like an invention.

What is Patent Novelty?

Novelty is one of the more straightforward concepts to understand in U.S. patent law. Essentially, it’s asking whether there is a single instance in the prior art that discloses the invention. If there is, the invention is not novel. If there isn’t, then a fundamental hurdle to getting a patent has been cleared.

Compare the Claimed Invention, Not an Abstraction

One mistake many inventors make is comparing an abstraction of their invention with the prior art. It’s easy to boil an invention down to the core concept as you would describe it to a layperson or investor. However, the problem with doing this is that novelty isn’t comparing this kind of abstraction of the invention with the prior art.

Rather, novelty is comparing the invention as claimed in the patent application. This distinction is important to be mindful of, as the claims may be directed toward the actual hook that is patentable over the prior art, which wouldn’t necessarily be part of the description you’d give to a layperson, investor, or even your customer.

Why is Patent Novelty Important?

Patent novelty matters quite a bit for the integrity of our patent system because it prevents the patenting of existing inventions. While that may seem like an obvious statement, when anyone in the world can apply for a U.S. patent, there has to be a check built into the law. By ensuring that a creation is new, patent law facilitates progress by encouraging inventors to create truly innovative solutions rather than regurgitating known concepts. Understanding whether an invention is novel involves an analysis against “prior art.”

Defining and Identifying Prior Art

Prior art entails just about everything publicly accessible before the priority date of a patent application. It’s hard to convey the gravity of this statement, but here’s a small list of example sources of prior art:

• Patents;
• Publications;
• Academic literature;
• Products for sale online;
• You competitor’s offerings;
• ABANDONED patent applications;
• Real-world products and systems;
• Sales & offers for sale (even if secret!); and
• Just about anything else publicly available.

Just thinking about the volume of material in any of these areas is enough to make your head spin. I like to sum it up as prior art for the most part includes all publicly-accessible human knowledge prior to your filing date, plus your own business activities prior to the start of your grace period.

Your Own Work Can Affect Patent Novelty

That last point touches on a minefield that most startups are wholly unaware of when it comes to patents: your own startup’s activities can work against your ability to get a patent. This even includes secret offers for sale that you’ve made before your priority date. That’s why, even if you’re not ready to start the patenting process, it’s important to be thinking about the process early so you don’t accidentally foreclose your ability to start it.

Conducting a Prior Art Search

Once examination of your patent begins, the patent examiner is going to conduct a prior art search to determine what the relevant prior art looks like. Generally, this search will yield 10 to 15 instances of prior art that resemble some or all of your invention most closely. Some of these may then be used to formulate rejections on the basis of anticipation (i.e., non-novelty) or obviousness.

These, and the other instances found, will be communicated to you in an office action. Receiving a couple of office actions is common in a patent application, so there’s no need to worry that your invention is “rejected,” since even a “final” rejection by the USPTO is procedurally not final (rather, it’s just the close of one prosecution cycle).

Pre-Application Prior Art Searching

Some startups and inventors prefer to begin the process of applying for a patent by conducting a prior art, or patentability, search before assembling a patent application. There is mixed value in doing this, since it’s not possible for any prior art search to uncover all of the prior art that could be cited against a patent application. Oftentimes, the references cited in an office action are different than the ones found in a pre-application prior art search.

This is why a pre-application prior art search should never be viewed as indicative of whether you will or will not get a patent on an invention.

There are times when a pre-application prior art search is helpful, such as when the field is crowded, when the invention is a “simple mechanical” invention, or when you’re looking to get an understanding of the patent landscape in your field. Consult with your patent attorney if you’re wondering whether you should do a pre-application prior art search.

The Patent Novelty Test: Comparing Inventions to Prior Art

Now that we have an idea of the prior art landscape looks like, we can compare your invention to the prior art. However, you have to keep in mind what I wrote above: we are comparing your invention as claimed in your patent application and not in the abstract.

Here, we’ll break down patent claims into their limitations—otherwise known as features or elements—forming the basis of your invention’s defenses. I call them limitations, because that’s what they are. You want to think of patent claims as boundaries, not feature lists. The limitations, however, must each be found in a single prior art reference for a claim to be rejected on an anticipation (i.e., lack-of-novelty) basis.

The best way to visualize how this is done is to create a claim chart and then review the prior art.

Create a Claim Chart

The first step in evaluating the novelty of a patent application is to create a claim chart. This is easiest described by way of an example. Let’s say we have the following patent claim for a chair:

1. A seating apparatus comprising a leg, a seat, an armrest, and a back.

So, the corresponding claim chart would break this down limitation-by-limitation:

Now, let’s say that the three closest instances of the prior art to your patent application are:

• Reference 1: “Stool”
• Reference 2: “Task Chair”
• Reference 3: “Folding Bleacher Seat”

Now, we add these to the claim chart and ask whether the given limitation is included

Taking a look at this claim chart, we can see that not one of the three references discloses each and every limitation of our claim. The Stool lacks the armrest and the back. The Task Chair is the closest reference, but lacks the armrest. The Folding Bleacher Seat lacks the leg and the armrest. Thus, in the absence of other information, our claim would be novel over these prior art references.

Further, when we’re looking at the claim chart, we can see that the armrest seems to be the most interesting feature from a patentability standpoint and may be the difference between getting a patent and not getting a patent.

Looking at a claim chart is a great way to analyze the novelty of an invention. Most experienced patent attorneys have looked at claims for long enough that parsing out the interesting limitations of a claim against the cited prior art references becomes intuitive.

If an instance of prior art covers all the claim’s limitations, the claimed invention lacks novelty. When a patent claim is rejected as not novel (i.e., anticipated) by a prior art reference, the next step is to argue against the rejection, amend the claim given the insights of the rejection, or both. Keep in mind that the examination process often works as a negotiation over claim scope.

Final Thoughts on Patent Novelty

The novelty requirement is a basic quality control in our patent system. It prevents the recycling of existing patents and ensures that newly patented inventions actually “promote the progress of science and the useful arts” as Art. 1, cl. 8 of the U.S. Constitution sets forth.

Understanding and leveraging patent novelty is important as you’re building out your IP portfolio strategy and the capture plans you put in place to harvest your company’s innovation.