Is it patentable? An inventor is entitled to a patent unless the invention is not patentable subject matter (Section 101), is not novel (Section 102) or is obvious (Section 103). I have discussed what is and is not patentable subject matter. See my posts of Patenting Computer Software and Avoiding Unpatentable Ideas. I have also discussed the non-patentability of an obvious invention. See my posts of Is it Patentable? and Overcoming Obviousness Rejections. Now I am discussing the requirement that the invention, as stated in a claim of the patent application, must be novel.
An invention is not novel if it is “anticipated” by the prior art. This means that if each element of the claimed invention (as stated in a claim of the patent application) is found either expressly or inherently described in a single prior art reference, the invention is not novel and therefore not patentable. The invention is deemed to have been anticipated by the prior art.
Note the determination of novelty is made by examination of the inventor’s claim. The claim is the legal description of the invention as stated in the patent application. The claims are read in light of the written description of the invention, i.e., the descriptive specification and drawings of the application.
As an aside, although I encourage inventors to file their own provisional applications for patent in lieu of doing nothing, you really need a qualified patent attorney to draft the follow-on non-provisional application. The non-provisional application will be examined by a USPTO examiner for patentability (novelty, non-obviousness, etc.). The non-provisional application is required to contain at least one claim defining the invention.
Note again that an invention cannot be patented if it is disclosed in the prior art. If the invention is already disclosed in the prior art, the invention is not novel. This can be general public knowledge, written publications, prior patents or published patent applications. Therefore it is often a good idea to have a good prior art search conducted before filing the non-provisional application. Note I recommend prompt filing of provisional applications (even DIY provisional applications) without waiting for a prior art search.
What is important is the inventor’s actions (you) can create prior art that will defeat your subsequent attempts to obtain patent coverage. Hence the need for prompt filing of provisional applications.
Remember the first inventor to file an application for patent will be the only person to acquire patent rights in the invention. However the USPTO allows an inventor a one-year grace period to file an application after the inventor makes a public disclosure of the invention, e.g., a presentation or demonstration of the invention (even to a small group of people) or sale of the invented product/device. BUT this one-year grace period may not protect the inventor from a prior filing by an independent inventor.
Note also this one-year grace period does not apply to the inventor’s rights to file for patent protection in foreign countries. First disclosure or sale prior to patent filing can result in loss of foreign patent rights.
Perhaps an example will be helpful. One handled widgets for processing potatoes are known. You invent a two handle widget. This is novel and patentable. You disclose to potential investors that you have invented a new widget that process potatoes more rapidly and efficiently, but do not disclose that it utilizes two handles. You may have created a disclosure triggering the 1-year grace period to file a patent application. But perhaps not since you have not really disclosed the secret sauce of your invention, i.e., that the widget has two handles. Therefore an independent inventor that has separately invented a two handle widget and immediately files her patent application one day after your presentation to investors may have beaten you to the patent office and acquired the patent rights.
However, if the example is changed wherein you make an unrestricted sale to the public of your two handled widget and the next day the independent inventor files her patent application for a two handled widget, she will not have patent rights since your sale has created a prior art reference. Your prior sale is deemed to be a disclosure of the invention to the world and her patent application is no longer for a novel invention. You, however, still have up to one-year after the first sale to file your patent application.
The question of “is it patentable” requires knowing whether the invention is novel. Novelty is destroyed by public use or disclosure of the invention by a third party prior to your filing of a patent application. However, the disclosing third party may still have the benefit of the one-year grace period to file his/her own patent application.
Copyright © David McEwing 2021