Inventors often try to improve something. Their ideas may be better for the environment, healthier for people, and faster. Some of them may try to make something aesthetically pleasing, better for the environment, or more affordable. Others may try to improve something by making it lighter or better. It might be a faster, cheaper, easier or healthier solution to an existing problem. It could also be visually different from the existing one or have new color or light properties. In short, it could be anything that makes life easier for someone else. Whatever it is, when to call an idea or invention a novel often depends on the circumstances.
Novelty
What makes an idea or invention novel? Generally, novelty in patent law means that the idea or the invention has never been made before and it has never been published or described in a patent application. It is a necessary prerequisite for an idea or invention to receive patent protection as it means that the invention must not form part of prior art.
Under US Patent Law, the 35 U.S. Code § 102, an applicant is entitled to receive a patent unless the invention is anticipated or has been disclosed as prior art. The section goes ahead to list instances when a patent application is to be rejected for not being novel. These instances include where the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
For example if a new product is manufactured and is already being sold in the market to the public, a subsequent application to patent it will be rejected for lacking in novelty. This is because the claimed invention is already on sale and therefore forms part of the indicators for rejection as anticipated under the 35 U.S. Code § 102.
Another example is where an invention is described in an article in a newspaper or magazine of wide circulation prior to when the application for patent protection of the said invention is made. The patent application for the claimed invention will be rejected under the 35 U.S. Code § 102 for lacking in novelty.
Image Credit: Unsplash
Prior Art
To be considered a novel invention, the new concept or idea must be substantially different from prior art. Prior art is published work that is not obvious, yet has been subjected to a prior search. Prior art can be any document published before the critical date of the invention and can include an article published in a daily gazette, previous patented ideas, and items that have been sold in the open market. Thus, it is necessary to seek further sources to determine if the idea is novel.
Additionally, an inventor may want to share an idea or invention with others. In such circumstances the disclosure made in confidence is not considered prior art. Nonetheless, the disclosure should be documented in a written non-disclosure agreement (NDA) signed by both parties. It is the simplest and most legally tenable way of proving that a disclosure was made in confidence.
Effective filing Date
There is a major exception to the requirements under 35 U.S. Code § 102. Where a disclosure of an invention is made 1 year or less before the effective filing date of the claimed invention, that disclosure shall not be prior art if the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter and disclosed directly or indirectly from the inventor.
It means that an invention still retains its novelty element even after it has been disclosed as long as the patent application is made within one year after the disclosure. So disclosure is not always an impediment to novelty unless the patent application is made within a year of the said disclosure.
However it is legally advisable that an inventor should make a patent appilcation as early as possible after disclosure, because it may not always be clear when a “public disclosure” has been made. For example discusing and showing the invention to friends and family may actually count as ‘disclosure’ and therefore the one year period would begin running then. It is also important to note that majority of countries, except the US, do not allow a one-year grace period for filing a patent application following disclosure. It is therefore usually better to file a patent request before public disclosure of the invention.
Disclosing the invention may also cost the inventor valuable foreign filing rights. Further, someone else may discover the publication and file a separate application for the same or a similar idea. A subsequent claim could require an expensive derivation proceeding.
Image Credit: Unsplash
Role of the Patent Office
As a matter of legal construction, the 35 U.S. Code § 102 begins with the statement, “A person shall be entitled to a patent unless…” and goes ahead to list the instances where an application will be rejected. This essentially means that the Patent Office has the responsibility to explain the applicable statutory or regulatory requirements have not been met if a claim in an application is to be rejected. The patent office further has the duty to notify the applicant of the rejection with sufficient reasons and to provide relevant references which may be useful to the applicant in deciding whether to continue with the applcation or not.
Additionally, the United Stated Patents Office policies require that inventors disclose prior art material when filing a patent application and has laid down a specific procedure to aid in disclosing relevant prior art. To make sure that your idea has not been published before, you should check historical libraries, articles, and art for similar items. This way, you can make sure your invention is truly novel. This way, you’ll be more likely to win the patent you need to protect your idea.
conclusion
In general, an idea or invention can be called a “novel” if it has not been published or put to use in the public prior to a patent application. The value of an idea or invention can be determined by its novelty and so it is therefore important for one to be well acquainted with legal and procedural requirements of novelty when making a patent application.
Additionally, the level of novelty of an idea or invention is often dependent on the maturity of public knowledge. A solution may be completely new in one context but widely known in another. In addition, it can be considered novel from several viewpoints, including technological, scientific, and economic.
Generally, there are three levels of novelty: central, extreme, and unconventional. Each level of novelty has a different range of potential sales and it is important to note that novelty does not necessarily translate into marketability. In some cases, a low novelty score may be sufficient to prevent an invention from being patented. In other cases, an invention could have a high novelty level, but not a high sales value.