INVENTION Mechanical, Consumer Product, Instrumentation,
Biotech? Work With Me To Patent Your Inventions From Anywhere In The World.
See the Details At: My IP Services
Is My Invention New?*
Gary L. Baker, Esq., Patent Attorney
Intellectual Property Services
PLEASE NOTE the
AMERICA INVENTS ACT HAS BEEN PASSED WITH MANY CHANGES TO PATENT LAW,
INCLUDING A NEW "FIRST TO FILE" RULE. PLEASE SEE THE
USPTO FOR MORE
I. Overview of Novelty and Novelty Searches
II. Patentable Subject Matter:
- Whoever invents or discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may obtain a patent
therefor, subject to the conditions and requirements of this title.
- Pioneering Inventions - Inventions that are the first in a field can be
claimed broadly to cover an entire genus of, e.g., a material, process, or device.
Generic claims are generally short claims, with few limitations on scope of
protection. To be granted, such claims must generally be supported with a broad
enabling description in the patent application, e.g., including descriptions of
representative species of embodiments across the range of the claimed genus.
- Methods and Processes - Ways to make or use machines and materials can be
valuable inventions protected by a patent. A product can actually be claimed
according to the process of making it (a "product by process" claim), but only
if the product in question cannot be defined in any other way, and only if the product
itself is novel rather than its method of production.
- Improvement Inventions - A better or specialized way to practice a process,
material or device can qualify for patent protection.
- Ineligible Subject
Matter - Patent protection may not be available, e.g., for claims purely to
natural laws, natural substances, algorithms, abstract ideas, and physical
phenomena. However, a skilled patent practitioner can design eligible
claims incorporating such material.
U.S. Novelty - For Full Text
A person shall be entitled to a patent unless:
- 1) 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 ...
- 1) Disclosures Made 1 Year of Less Before the
Effective Filing Date of the Claimed Invention -- A disclosure made 1 year or
less before the effective filing date of a claimed invention shall not be
prior art to the claimed invention under subsection (a)(1) if-- ‘(A) the
disclosure was made by the inventor or joint inventor or by another who
obtained the subject matter disclosed directly or indirectly from the inventor
or a joint inventor; or ‘(B) the subject matter disclosed had, before such
disclosure, been publicly disclosed by the inventor or a joint inventor or
another who obtained the subject matter disclosed directly or indirectly from
the inventor or a joint inventor.
- 2) Disclosures Appearing in Applications and
Patents -- A disclosure shall not be prior art to a claimed invention ... if:
(A) the subject matter disclosed was obtained directly or indirectly from the
inventor or a joint inventor; (B) the subject matter disclosed had, before
such subject matter was effectively filed ... , been publicly disclosed by the
inventor or a joint inventor or another who obtained the subject matter
disclosed directly or indirectly from the inventor or a joint inventor; or (C)
the subject matter disclosed and the claimed invention, not later than the
effective filing date of the claimed invention, were owned by the same person
or subject to an obligation of assignment to the same person.
For example, if an earlier filed patent application or earlier
disclosure was "derived from" the first inventor's teachings, the first inventor
may still retain priority status to prosecute the application.
Section 102 contains many more conditions that can disqualify a patent. See
a patent professional to avoid this mine field.
V. The All Claim Limitations Rule
In order for a reference to anticipate an invention, anticipation requires that
all limitations of the claim are found in the reference, or fully met by
it. Kalman v. Kimberly-Clark Corp., 218 USPQ 781, 789 (Fed. Cir. 1983). That is, suppose an older invention only describes a device requiring 4 parts; if
your claimed invention has 5 parts (e.g., an additional part improving the old invention),
then the older invention does not provide a basis to reject your claim for anticipation
under section 102.
VI. What are All Limitations of a Claimed Invention?
- A claim to a composition containing 4 ingredients may be considered to have 4
limitations. If a prior art reference describes a composition with 3 of the 4
ingredients, it does not anticipate the claim. If a prior art reference describes a
composition with 5 ingredients, including the 4 ingredients, it would probably be
considered to anticipate the claim.
- A claim to a method that has 5 steps may be anticipated by a prior art reference
that has the same 5 steps. Anticipation by the reference might be avoided by
amending your claim to add another step not described in the reference.
- A new machine that has 4 claimed parts may be anticipated by an older machine with the same
4 parts. However, if the parts are claimed as "adapted to" interact differently, the old
machine might not anticipate the new machine.
VII. Anything Published Can Be Old in the Art
Has the invention been previously disclosed to the public (published)? Many
types of public disclosure can be considered publication:
- Conference Presentations and Posters
- Scientific and Technical Journals
- U.S. and Foreign Patents
- Advertisements and Product Labels
- The Internet
- Was the Invention Offered for Sale?
- Was the Invention Used in Public?
However, discussions with small groups, informed of invention confidentiality, may
not be considered a publication. There can also be an exception where a public use
of the invention was for experimental purposes, e.g., to complete development of the
invention. Experimental use should be well documented in design, execution, and
analysis. Further, there is arguably no publication if the essence of the
inventive aspect is not apparent in the disclosure.
VIII. Do-It-Yourself Searches
You can do your own search for prior art to your invention. Typically, this
involves searching the stacks of a library, or key word searches of available databases.
Recommended databases for searching many inventions are listed below:
IX. Paid Searches
- Many Businesses Exist to Search for References Relevant to Your Inventions (e.g.,
Prior Art Searches www.priorart.com)
- What You Ask For - No one can guarantee to prove a negative. That is, a paid
searcher can not prove that prior art references do not exist. However, you
can demand and expect a thorough search of certain requested key words, key word
combinations, and/or classifications of inventions. Require that the searcher
provide a complete listing of what was searched and copies of the most relevant references
- You Should Get What You Pay For. Two or three hours of searching (searcher
fee about $75/hr) on appropriate databases should find most references relevant to a
typical invention. If the invention is not highly sophisticated or specialized, the
searcher can take additional time to select the most relevant references discovered.
Otherwise, you can review the references yourself to discover the most relevant
prior art. If you want an opinion on the consequences and conflicts between your
invention and the prior art, ask a patent professional with the proper technical
background. A written opinion from a patent attorney can be quite expensive.
X. Opinions Regarding Prior Art
- Novelty Opinions - A novelty opinion can be obtained to get an idea of the novel
aspects and scope of an invention. A novelty opinion should start with an extensive
search to find the relevant prior art (references before your filing date) that can be
found with reasonable efforts. The limitations of proposed invention claims can then
be systematically compared in a spread sheet (comparison table) to relevant discussions
found in each prior art reference. If any single reference is found to disclose each
of the limitations of a proposed claim, the claim may be considered anticipated by the
reference (i.e., the claim lacks novelty). A claim that lacks novelty should be
rejected, under 35§102, and should not issue in a patent.
- Patentability Opinions - Patentability of an invention (see MPEP section
2100) is a
much more complicated matter than novelty. Patentability can be affected by, e.g.,
the subject matter of the claimed invention, the novelty of the claims, obviousness of the
claims, enablement of the claims provided in the application, the clarity of the
description in the application, and/or inequitable conduct of an applicant. Such
opinions require acquisition and analysis of much more information than for a novelty
- Freedom to Operate Opinions - FTO opinions entail comparison of a
work plan against active patents to see if practice of the work plan may amount to infringement. The
work plan is a precise description of actions intended that may infringe a patent.
For example, a business may plan to manufacture and sell a particular product. A
search is carried out to see if there are any enforceable patents with claims to the
intended product or method of manufacture. Construction tables of potentially
blocking patent claims can be prepared to list the meaning of each limitation in the
claims. The meanings of the claim limitations are based on the understanding of one
skilled in the art from reading the application (see
Phillips v. AWH),
the history of the patent application (the "file wrapper"), claim
differentiation, and the plain meaning of terms in the claim limitations. If an
active patent appears to cover (reads on) the work plan, there are several options, such
as, e.g., 1) abandoning the work plan, 2) changing the work plan to avoid the obstructing
patent claims, 3) attempting to license the claimed technology from the patent owner, 4)
waiting for the expiration date of the obstructing patent, or 5) evaluating the validity
of the obstructing claims.
- Validity Opinions - A claim that appears to obstruct your work plan may not be
enforceable if the claim is invalid or the fair scope of the claims does not actually read
on the work plan. As an initial step in a validity opinion, a claim construction
table can be prepared to determine the scope of the obstructing claims based on the
meaning of claim limitations, e.g., from reading the meaning of claim terms in the
application and in light of communications between the applicant and patent examiner
during prosecution of the patent application (file wrapper estoppel). It may be that
the valid scope of the claims is narrower than it first appeared from reading the claims
without application of formal construction rules. The next step in a validity
analysis would be to essentially carry out a patentability search to see, e.g., if there
was prior art that should have been used to reject the claim as anticipated (not new) or
when the claim was being prosecuted in the Patent Office. Mechanisms exist to
invalidate issued claims so that they can no longer be enforced.
XI. Dealing With Prior Art
If references are discovered that describe your invention, your claimed invention
may lack novelty and have no right to patent protection. If the reference is an
active (enforceable) patent, you may be subject to an infringement law suit if you
practice the invention, even if you did not know the patent existed.
- Claim Scope Adjustment - When a novelty search determines that proposed claims, or
claims in an active application, are not new in light of prior art references, the
application does not necessarily have to be abandoned. The claims can be adjusted
(amended) to avoid the prior art references. However, the claim adjustments have to
be supported by the description in the application - you can
not claim something not
described in your application. For example, suppose your invention is claimed as a
robot that walks on legs comprising: 1) a reciprocating member, 2) driving a leg shaft,
having a resilient foot. If a novelty search finds a reference describing all three
limitations, but with the reciprocating member only being described as a pendulum, your
claim can be amended to avoid the reference, e.g., by amending your claim to require your
reciprocating member to consist of a crank and rod (if your original application described
this option). Of course, the additional limitation reduces the scope of your claim.
- Licensing the Right to Use an
Improvement - If your invention is an improvement on an older invention that is still
protected by an active patent, you may have to get a license to practice your own
improvement. A license is a contract granting rights to practice a patented
invention without threat of an infringement law suit. As with other contracts, the
terms can depend on the bargaining power of the parties. If your improvement has
issued as a patent, you can prevent the holder of the older invention from practicing the
improvement. In such a case, you might want to license the improvement to the owner
of the old invention, or you may each license your invention to each other (cross-license)
so you may both practice the improved invention.
- If you discover a patented invention is preventing you from practicing a work plan
or an improved invention, you might want to see if the blocking patent is valid. You
can do a patentability search for prior art to the invention to see, e.g., if the
invention was obvious or not new before it was filed (see Validity Opinions, above).
An invention can be considered novel if there are no publicly available reference
describing the invention. A novelty search can discover prior art references to
consider in determining the fair scope of an invention or to evaluate the validity of an
issued patent claim.
Contact Gary Baker about protection of your
inventions. Mr. Baker has a broad background and can protect a wide variety of
inventions including, e.g., mechanical devices, genes, analytical instruments, novel
materials and pharmaceuticals.
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*Educational comments not intended to be relied on in
your specific case. See a Patent Professional for advice tailored to your situation.
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