What is a novel invention?
Patent novelty refers to the uniqueness of an invention, but it’s actually much more specific. An invention is novel if no single prior art reference discloses all the components that form the claimed invention.
So, the two critical pieces of information that must be analyzed to determine novelty are:
- patent claims; and
- prior art.
When a patent examiner assesses the potential novelty of a patent-pending invention, the examiner compares the claims to the prior art.
What is anticipation?
Anticipation is the opposite of novelty. If a patent examiner believes that a single prior art references shows all components of a particular claim (aka “claim limitations” or “claim elements”), the examiner will issue an Office Action stating that the claim is rejected under Section 102 as being anticipated by said prior art reference.
For example, suppose your invention comprises three components – A, B & C – but your patent application includes an independent claim that recites merely A and B. If the examiner can find a prior art patent that shows both A and B, the examiner will reject this independent claim as being anticipated by the reference.
Anticipation thus requires that all elements in a claim are found in a single piece of prior art.
Overcoming 35 USC Section 102 rejections
One way to respond to a Section 102 rejection is to argue that the prior art reference does not show all the claim elements seen by the examiner. In our above example, an applicant could argue that the prior art patent shows only A, but not B. Patent examiners will not be convinced by conclusory statements, so the applicant should elaborate on why the prior art reference fails to show a particular claim element. It may help to explain that what the examiner see as element B is in fact something entirely different.
Another option is to amend the claim. An applicant can amend a claim to clarify an element, add a new element or do both.
In our example above, if the cited prior art patent fails to disclose C, the applicant can amend claim to recite ABC. The response should remarks pointing out why C is missing in the prior art patent.
Novelty Search: Anticipating Anticipation
Also known as a novelty search, a patentability search can be helpful in identifying potential anticipatory prior art references. While a patentability search does not guarantee the grant of a patent, it can help an inventor make an informed decision on whether or not to apply for a patent.
Novelty searches also enable better claims to be submitted with the initial filing of a non-provisional application, thereby reducing the risk of a Section 102 rejection in a first Office Action. For example, if a search uncovers a prior art publication that already teaches AB, then it wouldn’t make sense to submit an independent claim reciting AB alone. Knowledge of the prior art enables the inventor’s patent attorney to start off with claims that recite a combination of elements not found in the search (e.g., ABC).
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