Patents for Novel Inventions

Article I, § 8 of the United States Constitution authorizes Congress to “promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.” Congress has created two sets of laws to implement the object of this provision: copyright laws protects original works of authorship and patent laws protect original inventions. These laws allow creators of intellectual property such as inventions and works of authorship to protect their rights to property that is not susceptible of being secured under lock and key, particularly when such creations often have little utility until they are sold or distributed or used to make products that may be sold or distributed.

The United States Patent and Trademark Office

Patent protection is provided by federal law through the United States Patent and Trademark Office (USPTO) and gives a patent owner the right to exclude others from making, using, selling, distributing or importing the subject of the patent for a certain period of time. Only certain things may be patented, and there are several requirements that an invention or other subject of a patent application must meet in order to be eligible to receive patent protection. One of the most basic requirements is novelty, or newness. The purpose of the novelty requirement is to prevent the patenting of inventions that have become widely known and used, which are said to have entered the public domain, and to carry out the general principle that the first person to create an invention is entitled to patent it.

Definition of Novelty

In order to be novel, an invention cannot have been previously patented, described in a printed publication or used or known by others prior to its invention by the patent applicant. To be known by others, a patent must have been fully disclosed and the disclosure must be accessible to the public in the United States. Only minimal use of an invention by others is necessary to disqualify patent eligibility as long as the use is accessible to the public, which is the case if no steps were taken to conceal the use. Experimental use by the inventor to test the invention is not a use that will disqualify patent eligibility. Printed publication of a description constitutes accessible disclosure of the invention as long as the publication is distributed or is filed in such a way that a member of the public could find it by exercising reasonable diligence. Patents are usually published, which also constitutes printed publication that will negate patent eligibility. If a patent is not published, the relevant inquiry is whether the exact thing to be patented was previously patented and not merely described in an application that ultimately protected some other invention.

Additional provisions of patent law prevent an inventor from obtaining a patent if another inventor had taken steps to patent the invention that resulted in the public disclosure of the invention and if another person invented the item before the patent applicant and did not abandon, suppress, or conceal the invention before the patent applicant invented the item. These provisions protect the rights of an earlier inventor against a later inventor.

In order to determine whether an invention to be patented meets the novelty requirement, the U.S. Patent and Trademark Office will search through existing patents and other literature in the field in which the invention is classified to see if the invention has been patented or described in a way that discloses it to the public. The body of information that will reveal whether an invention to be patented meets the novelty requirement is referred to as the “prior art.” If the prior art indicates that the invention to be patented has already been patented or described in a publication or in another manner, the item for which a patent is sought is said to have been “anticipated,” and the item will not be eligible for a patent. Inventors may conduct searches prior to applying for a patent to avoid the unnecessary expense of time and money in applying for a patent that will most likely be revealed to have been anticipated by the prior art.

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