question.jpgIn Patents

What is the novelty requirement?

One of the requirements for obtaining a patent is that only new inventions can be afforded patent protection. Thus, the requirement that an invention be novel in order to get a patent is simply a requirement that the invention is something new. The determination of whether or not an invention is new, or novel, is made by looking at the “prior art.”

The distinction between this novelty requirement and the nonobviousness requirement is that, in deciding whether an invention is nonobvious, the examiner compares the invention to a combination of all relevant prior art. However, when looking at the issue of novelty, he compares the patent application separately to each piece of prior art.

Related to the novelty requirement are also certain provisions, referred to in patent law as “statutory bars,” which essentially prevent an applicant from obtaining a patent where the applicant waits too long.  So an inventor cannot get a patent if the invention was sold in United States for more than a year before the application was filed or if the invention was described in a printed publication (either in the United States or abroad). These statutory bars also prevent an inventor from getting a patent when he abandons his rights. The law refers to two types of such abandonment. First there is express abandonment - for example, if you invent something but then publish all the information about the invention on your website, you have publicly disclosed your invention and expressly abandoned it. Second, there is implied abandonment. Here, you may not have meant to abandon your invention, but your actions may imply an abandonment anyway - for example, if you invent something but wait eight years to apply for your patent, it may be determined that you waited too long and have abandoned your rights (although, if you can show that you waited because you were keeping the invention private as a trade secret, then you haven’t abandoned your invention and can still seek to patent on it).