When preparing a patent application, an inventor must declare that the invention is novel, and nonobvious, and that the inventor is the first to invent this device, process or compound. Here's what these standards mean:
Novelty and Prior Art
Your invention must be novel to qualify for a patent (and you must be the first to invent it). Novelty means that the invention must differ in some way from the prior art (i.e., the publicly known or existing knowledge in the field of the invention.) A patent 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. For that reason, patent attorneys strongly recommend performing a prior art search before filing a patent application .
What is Prior Art?
When assessing the prior art, the patent examiner or courts will consider the following:
- prior patents that issued more than one year before the filing date of the patent or before the date of invention
- prior publications having a publication date more than one year before the filing date of the patent or before the date of invention;
- U.S. Patents that have a filing date prior to the date of invention of the patent at issue
- anything in public use or on sale in U.S. more than one year before the filing date of the patent at issue
- anything that was publicly known or used by others in this country before the date of invention 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 in suit, where the thing made or built was not abandoned, suppressed or concealed.
The requirement for novelty (set forth in 35 U.S.C. § 102) provides that a patent will not be issued if the invention was known or used by others in this country or patented or described in a printed publication in this or a foreign country before the date of invention. In addition, the USPTO will not consider an invention to be novel if the application for the patent is made more than one year after sale, public disclosure, use, offer of sale in the United States or is patented anywhere in the world. This is known as the one year rule or on sale bar.
First to Invent
In the United States, patents are granted to the first person to invent (i.e., the "first to invent" system). In making this decision, it is necessary to understand how inventions are created. Thomas Edison once stated, "invention is one percent inspiration and 99 percent perspiration." The "inspiration" of which Edison spoke is the conception or idea for the invention. The "perspiration" results from the design, testing or revising of the concept so that a useful working invention is created. In patent law, this latter process is known reduction to practice. In addition to the building and testing of an invention, the act of preparing and filing a patent application also is considered a reduction to practice (known as constructive reduction to practice).
When there is a dispute as to novelty and particularly as to who was first to invent, a determination will be made as to the date of invention. The date of invention is either the date the invention was conceived (provided that the applicant diligently reduced the invention to practice) or actual date of reduction to practice, whichever is earlier. Because these dates are often crucial in patent disputes or in preparing patent applications, inventors often maintain detailed notebooks documenting their progress on an invention and these notebooks are signed by witnesses.
What is Nonobviousness?
All inventions must meet a requirement of nonobviousness. This requirement demands an inquiry into whether persons working in the field would consider the invention obvious.
In 1966, the U.S. Supreme Court grappled 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?
Novel but Nonobvious?
It is possible to create a device that is novel but is not nonobvious. 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.
Possible Changes Ahead?
In most countries, patents are granted to the person who first files for a patent application. This is known as a "first to file" system. At the time of writing of this book, the United States is considering proposals to change the American patent system to a "first to file" system. This change is proposed as part of efforts to harmonize U.S. patent law with other countries.
