State of Innovation

Patents and Innovation Economics

Understanding Patent Novelty (35 USC 102) for Inventors

In order to obtain a patent your invention has to be useful (35 USC 101), novel (35 USC 102), and non-obvious (35 USC 103).  The goal of this post is to explain the novelty requirement in terms that are clear to engineers and scientists.

Patent law describes every invention as a combination of elements and connections.  For instance, a bicycle would be described as combination of a frame, connected to wheels by axles and a transmission system between one the wheels and set of pedals.  Under patent law your invention is defined by the “claims.”  A claim is a written definition of your invention, such as the description of a bicycle above.  In order for your “invention” to be novel, you claim must define a novel invention.  It is not enough for you to just describe a novel invention, you have to write a claim that defines a novel invention.

Since every invention is a combination of element and connections, so is every patent claim.  Because of the conservation of matter (matter and energy) you cannot creates something from nothing.  In addition, if you applied for a patent suggesting you had a “totally new” item in your invention you would receive a rejection from the Patent Office (USPTO).  Assume your “totally” new item was called “Novel-X”.  Since the examiner at the USPTO would not know what “Novel-X” is, they would reject your patent application as “indefinite” under 35 USC 112, second paragraph.  This part of the statute states: The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. 35 USC 112, second paragraph.

Novelty is defined as a claim that defines a set of elements and connections that are not found in any one reference.  This does not mean the elements and connection are not individually known.  If the patent office or court cannot find a single prior art reference with the same set of connections and elements combined in the same way, it is clearly a new item.  In the words of the law, “A rejection for anticipation under section 102 requires that each and every limitation of the claimed invention be disclosed in a single prior art reference.”  In re Paulsen, 30 F.3d 1475, 31 USPQ2d 1671, 1673 (Fed. Cir. 1994).

The key points to remember are:

Inventions are combinations of elements and connections.

Every invention is a combination of known elements and connections.

Your invention is defined by the claims of your patent.

The Patent Office has to find the same combination of elements and connections combined in the same way in a single reference with an earlier date than the filing date of your invention in order to reject your invention as not novel.

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August 4, 2009 - Posted by | -Law, -Philosophy, -Prosecution, Patents | , , , , ,

3 Comments »

  1. […] such as the description of a bicycle above.  Note it may be helpful to review the rules on Novelty before proceeding.  Under patent law each element and connection must be known.  This makes sense […]

    Pingback by Understanding the Non-Obviousness (35 USC 103) Patent Requirement « State of Innovation | August 12, 2009 | Reply

  2. […] the novelty[3] requirement for patent law.  For more information on the novelty requirement see Understanding Patent Novelty.   In order to be the inventor you have to be first.  Some critics complain that this is unfair […]

    Pingback by Explaining Patent Law Through the Lens of Natural Rights « State of Innovation | December 4, 2009 | Reply

  3. There is obviously a lot to know about this. There are some good points here.

    I’m Out! 🙂

    Comment by online stock trading advice | January 11, 2010 | Reply


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