What is patentable?
To be patentable, an invention must be both eligible and unique. Subject matter eligibility relates to the nature of the invention while uniqueness has to do with what has been done in the past. A unique invention must be both novel and nonobvious over the prior art, or past stuff. Novelty is the easier condition to satisfy. But novelty alone is not enough. You can file a patent for a novel invention, and still have your patent application rejected for claiming an obvious invention. So, let’s dig into what it means to have a patentable invention that is both novel and nonobvious.
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How can an invention be novel, yet obvious?
A novel invention is one that is not found in the prior art. To meet the novelty requirement, a claim must recite a combination of features where that particular combination is not found in a single prior art reference. For example, suppose your patent application claims a system having features A, B and C, and the examiner cannot find a single prior art patent that shows ABC. This claim would be novel.
You can see where this is headed. What if the examiner finds AB in a first prior art patent, and C in a second prior art patent?
If and when the patent examiner can find the claimed features in two or more references, they may reject your claim for being obvious in view of this combination of prior art references. Welcome to the gray world of obviousness.
Claims rejected for being obvious: What does a Section 103 rejection mean?
In a typical Office Action for a nonprovisional utility patent application, you may see rejections under the heading Claim Rejections – 35 USC § 103. In most cases, the examiner will cite a combination of multiple prior art references to arrive at the features recited in these rejected claims.
There are more ways than one to overcome an obviousness rejection. You will need to confer with your patent attorney on which strategies make the most sense. Don’t go for a cut-and-paste legal brief. Cheaper responses tend to consist of legal boilerplate without much technical discussion.
As I’ve suggested before, a more effective Office Action response will include both claim amendments and technical arguments. Such a response will typically take more time and, therefore, cost more. Would you prefer to spend more upfront to try to overcome obviousness rejection with one or two responses, or spend less initially and deal with even more Office Actions taking additional years of time?
When new clients have us take over their patent applications (written by someone else), I have found the following principle to be consistently true. Invest more upfront, and save time. Spend less upfront, and waste more time and money in the long run.
How will a novelty search help to see if your invention is patentable?
A novelty search aims to find prior art patent references that show your core features. In most cases, a thoroughly performed novelty search should reduce the risk of a Section 102 rejection based on the absence of novelty. Recognize that a novelty search, however, will not address the issue of obviousness.
Nonetheless, it may be worthwhile to invest in a novelty search especially if your concept is simpler. Just understand there are limits to the guidance that a novelty search can provide.
How to Make a Patent Application More Patentable
By anticipating these rejections before you file, you will have a roadmap on how to beef up your utility patent application at the outset. Your written description and drawings should show as much as possible to that you can have more features to claim. When those inevitable rejections come, and they will eventually arise, your patent application will provide you with more ammunition to fight against the rejections.
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