by: Joseph Page
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For purposes of patenting - what is 'novel'?


     An invention is entitled a patent if it is new, useful and non-obvious. Simple. But how do we measure these? Fortunately, the first two are quite easy. 'Obviousness' is a different kettle of fish entirely. "new", "novel" and "anticipation" are all pretty much synonyms for purposes of determining whether an invention is 'new'. There is little or no distinction between these terms and all refer to the principle which is encoded as law in 35 USC §102 which presently (2011) reads as follows:

"A person shall be entitled to a patent unless -
(a) 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 invention thereof by the applicant for patent, or
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or
(c) he has abandoned the invention, or
(d) the invention was first patented or caused to be patented, or was the subject of an inventor's certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor's certificate filed more than twelve months before the filing of the application in the United States, or
(e) the invention was described in - (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language; or
(f) he did not himself invent the subject matter sought to be patented, or
(g)(1) during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person's invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person's invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other."

     OK – so what does it mean: "the invention was known", "the invention was patented"? A patent examiner has a rulebook called the Manual of Patent Examining Procedures or MPEP. This give examiner's instruction on how to look at these points. For the 'novelty' or 'anticipation' question, the MPEP says at §2131:
"to anticipate a claim, the reference must teach each and every element of the claim"
     The courts have clarified further

"Anticipation is established only when a single unit of prior art discloses, expressly or under principles of inherency, each and every element of the claimed invention. This test is to be strictly applied."

     Most simply put, all this means that for an inventor to beat a §102 rejection, all he has to do is show that there is one single thin difference. Not a high hurdle at all. Only in the case where there are no differences whatever does a patent applicant lose on the §102 issue. If the examiner finds a reference which squarely and precisely teaches each and every element of the claim – then an invention is not 'new'. In other words, if something has not been precisely done before – it is 'new' for purposes of patenting.

Copyright IIP 2011
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