What is a novel invention?
Patent novelty refers to the uniqueness of an invention. To be patentable, an invention must be both novel and nonobvious. An invention is novel if it cannot be found in a prior art reference. In other words, an invention is not novel if all the claimed features can be found in a single prior art patent or product.
How does a patent examiner determine novelty?
Two critical pieces of information must be analyzed to determine novelty:
- patent claim(s); and
- prior art.
When a patent examiner assesses the potential novelty of a claim in a patent application, the examiner compares what is recited in that claim to the prior art. If the examiner can find all the claimed features in a single prior art patent, for example, the claim will be rejected as being “anticipated” by the prior art reference.
What is anticipation or lack of novelty?
Anticipation is the opposite of novelty. If a patent examiner believes that a single prior art reference 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.
You may see these rejections under a heading that says Claim Rejections – 35 USC § 102. In this section, the examiner will identify the anticipated claims and the prior art reference.
For example, suppose your patent description discloses three components: A, B & C. However, your independent claim recites only 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.
How to Argue Against a 35 USC Section 102 Rejection
To respond to a Section 102 rejection, you can argue that the prior art reference does not show all the claimed elements seen by the examiner. In our above example, the applicant could argue that the prior art patent shows only A, but not B.
Patent examiners, however, will typically be unconvinced by conclusory statements. Therefore, the applicant should elaborate on why the prior art reference fails to show a particular claim element. The focus should be on technical arguments, not legal citations. It may help to explain that what the examiner sees 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 the 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 help to identify potential anticipatory prior art references. While a novelty search does not guarantee the grant of a patent, it can help you 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 nonprovisional application. Better claims upfront can reduce 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 patent attorney to start off with claims that recite a combination of elements not found in the search (e.g., ABC).
Not sure if your invention is novel?
Email US patent attorney Vic Lin at email@example.com or call (949) 223-9623 to explore whether your invention is novel and possibly patentable. Our firm charges flat rates for filing patent applications.
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