Is My Invention New?*
Gary L. Baker, Esq. Patent Attorney
BioPatent Communications
PLEASE See a Licensed Professional For
Updated Advice Specific to Your IP Situation.
PLEASE SEE THE
USPTO FOR MORE
INFORMATION.
I. Overview of Novelty and Novelty Searches
II. Patentable Subject Matter:
35§101
- 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.
U.S. Novelty -
See
35§102; After March 15, 2013 See AIA
35§102:
A person shall be entitled to a patent unless:
- The invention was known before the invention thereof by the applicant, or
- The invention was patented, published, or in public use or on sale in this country,
more than one year prior to the date of the application, or
- He did not himself invent the subject matter sought to be patented, or
- Before such person's invention thereof, the invention was made in this country by
another inventor who had not abandoned, suppressed, or concealed it, and
- The first to conceive was not reasonably diligent in reducing the invention to
practice.
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 parts may be anticipated by an older machine with the same
4 parts. However, if the parts are claimed as interacting 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.
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
discovered.
- 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
opinion alone.
- Freedom to Operate Opinions - FTO opinions entail comparison of a work plan against
active patents to see if practice of the work plan would 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 consideration 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
obvious (35§103)
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, 3)
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).
XII. Conclusion
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.
BioPatent
Communications
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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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