Understanding Patent Law – Novelty and Prior Art

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 an invention for a certain period of time.

Patent Application Requirements

There are several requirements that a patent application must meet in order to be eligible to receive patent protection. One of the most basic requirements is novelty, or newness.

Patented Inventions must be Novel

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.

Public Disclosure

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 be disclosed and the disclosure must be accessible to the public.

Public Use

In comparison to publication, public use of an invention requires a lower standard to disqualify patent. As long as the use is accessible to the public, which is the case if no steps were taken to conceal the use, the use can invalidate a patent.

Experimental Use

Experimental use by the inventor to test the invention, in some cases, is not a use that will disqualify patent eligibility.

Printed Publication

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.

Patent Search

In order to determine whether an invention covered by a patent application meets the novelty requirement, the U.S. Patent and Trademark Office will search through existing patents and other prior art to see if the invention has been patented or described in a way that discloses it to the public.

Prior art refers to the body of information that will reveal whether an invention to be patented is new or novel. 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 patent 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.