In addition to inventions being required to fall within one of the patent types described above, an inventor must show that the invention is novel, is not obvious, and has utility.

1. Novelty

This requirement has various facets and is defined by federal statute (35 U.S.C. §102). As a result of the passage of the Leahy-Smith America Invents Act (AIA) in 2011, beginning on March 16, 2013, two different sets of novelty rules became applicable when evaluating patent applications. Whether AIA or pre-AIA novelty rules apply will depend on the patent application’s effective filing date (i.e., before or after March 16, 2013).

a. Pre-AIA Novelty

The pre-AIA set of novelty rules refers to the date of invention versus the date of filing. Therefore, for pre-AIA patent applications, the patent will be denied or an issued patent will be found invalid if, before the date of invention, the invention was:

  1. Known or used by others in the United States;
  1. Patented or described in a printed publication anywhere in the world;
  1. Described in a patent that resulted from an application filed before the date of invention; or
  1. Invented in the United States by another who did not abandon, suppress, or conceal it.

Again, note that these novelty requirements refer to the date of invention. If another’s patent or publication is asserted as grounds for a patent application’s rejection, or as the basis of a challenge to the validity of a patent, the inventor may have to prove that his or her date of invention predates that of the challenger.

This is one of the reasons why inventors need to keep complete, accurate, witnessed records to establish when the invention was made and when it was demonstrated as useful for its intended purpose—in other words, “reduced to practice.”

The novelty requirement also includes rules (also found in 35 U.S.C. §102) which preclude patentability if, more than one year prior to the date that the application was filed:

  1. The invention was patented or described in a printed publication anywhere In the world;
  1. The invention was in public use (non experimental) in the United States;
  1. The invention was on sale (which includes offers for sale) in the United States; or

    The applicant filed a foreign patent application granted before the U.S. application filing.

b. AIA Novelty

The AIA set of novelty rules refers to the application’s effective filing date versus the date of invention. Because of this, the AIA scheme has sometimes been referred to as a “first-to-file” system and a race to the Patent Office. The AIA, however, still requires that the applicant be a true inventor of the claimed subject matter, and cannot have derived or learned of the invention from another. The AIA system is therefore more accurately referred to as a “first-inventor-to- file” system.

Under the AIA, the patent will be denied if, before the effective filing date, the claimed invention was:

  1. Patented;
  1. Described in a printed publication;
  1. In public use;
  1. On sale;
  1. Otherwise available to the public;
  1. Described in an issued patent, the application for which was filed by another before the effective filing date; or
  1. Described in a published patent application, which was filed by another before the effective filing date.

The AIA provides several exceptions for disclosures made one year or less before the claimed invention’s effective filing date.

Specifically, exceptions are provided for instances where (a). the disclosure was made by the inventor, a joint inventor or another who obtained the disclosed subject matter from the inventor or joint inventor, and (b). before the disclosure, the disclosed subject matter has been publicly disclosed by the inventor, joint inventor or another who obtained the disclosed subject matter from the inventor or joint inventor.

Additional exceptions are provided for situations where the disclosure appears in a patent or published patent application and (a). the disclosed subject matter was obtained from the inventor or joint inventor, (b). the disclosed subject matter was publicly disclosed by the inventor, joint inventor or another who obtained the disclosed subject matter from those individuals prior to the patent’s or published patent application’s effective filing date, or (c). the disclosed subject matter was owned or subject to an obligation of ownership by the same person not later than the claimed invention’s effective filing date.

In some instances, a joint research agreement may allow the disclosed subject matter to be treated as having been commonly owned.

c. Common Concepts

Both the AIA and pre-AIA rules include the concepts of “public use” and “on sale,” but do not specifically define them. Since the same terms are used, it is anticipated that, under the AIA, the meanings established by the courts for these concepts will continue to apply. While a complete analysis of what constitutes public use or on sale is beyond the scope of this book, these “statutory bars to patentability” may turn on whether the inventor has begun a “commercial exploitation” of the invention. This then starts the clock on a one-year grace period, within which the inventor must either file a U.S. patent application (or an international PCT patent application designating the United States) or forever lose the ability to patent the invention.

A further note regarding published documents: Even an obscure manuscript written in a foreign language can serve to bar the patentability of an invention or invalidate an issued patent. Under the AIA, whether such a document or other activity or event can be considered as prior art may hinge on whether the document, activity or event is considered to be “otherwise available to the public.” This is one reason why patentability searches are, by their very nature, limited in scope and cannot be considered as an absolute assurance that an invention is patentable.

2. Non-Obviousness

Another requirement of patentability is that an invention must not have been “obvious” to one of ordinary skill in the art (stated by 35 U.S.C. §103) at the time of invention (for pre-AIA applications) or prior to the effective filing date (for AIA applications). This requirement is far easier to state than it is to describe.

In determining obviousness, the patent examiners and courts attempt to put themselves in the shoes of a person of ordinary skill in the art, and assume that this person is aware of all the relevant prior art at the time of invention or before the patent application was effectively filed.

The courts often apply a three part test in determining obviousness as established by Graham v. John Deere (383 US 1, 17 [1966]), an important U.S.

Supreme Court patent decision involving the invention of a type of agricultural plow. This test establishes the scope and content of the prior art, the level of ordinary skill in the art, and the differences between the prior art and the claims at issue. A number of additional factors referred to as “secondary considerations” are sometimes evaluated to show an invention was not obvious at the time of its creation. These considerations may include:

• The dramatic commercial success of an invention;

• Showing that others had attempted to address the problems solved by the invention and failed;

• The existence of a long-felt unfulfilled need for the invention; and

• That the prior art would tend to teach away from the invention.

In reaching a determination of whether a new concept is obvious in view of the prior art, it is important to note that the USPTO and the courts are permitted to take individual examples of prior art and combine them to find that an invention is not patentable. There is a requirement, however, that the combination must be reasonable and not contrary to the prior art itself.

3. Utility

The requirement of utility means that the invention must have a useful purpose and not be solely for implausible or immoral purposes. This requirement is rarely relied upon as a basis for denying patentability.

As previously discussed, under U.S. patent law, only an inventor can seek to patent his or her invention and, hence, a patent cannot be granted to a third party who, rather than invents, learns of or derives the invention from another and is merely the first person to race to the Patent Office. In those instances, pre-AIA and AIA procedures exist for the true inventor to establish his or her rights to the patent. Pre-AIA those procedures are known as “interference proceedings,” and under the AIA they are known as “derivation proceedings.” A detailed discussion of each is well beyond the scope of this book and depends heavily on the provable facts surrounding the situation.

To find out more please access our IP Primer page.