Novelty, Nonobviousness, and Prior Art

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One of the basic principles of patent law is that you cannot obtain a utility patent unless the invention is new (novel) and not obvious to those who work in the field of invention (nonobvious). When preparing a patent application, and during the examination process, the inventor is required to disclose and defend against previous inventions and patents and distinguish their “new” invention from everything that previously existed. Here are the basics: 

Novel 

Novelty simply means that your invention must be new -- that is, you are the first to present it to the world. To be “novel,” your invention must differ in some way from the prior art (i.e., the publicly known or existing knowledge in the field of the invention, described below.) After you file a patent application, an examiner at the U.S. Patent and Trademark Office (USPTO) will review the prior art and if there is evidence that the invention appears in the prior art, your application will be rejected and you will forfeit all of the fees paid. That’s one reason, patent attorneys strongly recommend performing a prior art search before filing a patent application. 

The Prior Art 

In the United States, patents are now granted to the first person to file for the patent. The definition of prior art includes the following: 

  • prior patents that issued before the filing date of the patent;
  • prior publications having a publication date before the filing date of the patent (except if the actual inventor-applicant created the publication and it was made up to one year before the filing date);
  • U.S. Patents that have a filing date prior to the filing date of the patent at issue
  • anything in public use or on sale in U.S. before the filing date of the patent at issue
  • anything that was publicly known or used by others in this country before the filing date of the patent in suit; and
  • anything that was made or built in this country by another person before the date of invention of the patent, where the thing made or built was not abandoned, suppressed or concealed. 

Nonobvious

All inventions must meet a requirement of nonobviousness – that is, people working in the field would consider the invention obvious.

In 1966, the U.S. Supreme Court wrestled with the definition of nonobviousness in the case of Graham v. John Deere Co. The court established a three part analysis, inquiring into the following:

(1) What is the scope and content of the prior art to which the invention pertains?

(2) What are the  differences between the prior art and the claims at issue? and

(3) What is the level of ordinary skill in the pertinent art?

Other courts have added subsequent factors such as:  Has the invention enjoyed commercial success? Has there been a need in industry for the invention? Have others tried but failed to achieve the same result? Did the inventor do what others said could not be done? Have other copied the invention? Has the invention been praised by others in the field? 

An invention can be novel and obvious

Yes, it’s possible to create a device that is novel but obvious. For example, an inventor created a method of clearing manure from a barn without using human labor. The system combined a water tank, flushing system, and a sloping barn floor. No prior device had performed this function so the invention was novel. However, the Supreme Court held that the combination of a water tank and a sloping barn floor was not patentable because it was obvious. If the Patent and Trademark Office rejects the application for nonobviousness, the applicant can attempt to prove that the invention produces a result that is not obvious.

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