NOVELTY AND OTHER CONDITIONS FOR OBTAINING A PATENT

In order for an invention to be patentable it must be new as defined in the patent law, which provides that an invention cannot be patented if: “(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent,” or “(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country more than one year prior to the application for patent in the United States . . .”

If the invention has been described in a printed publication anywhere in the world, or if it has been in public use or on sale in this country before the date that the applicant made his/her invention, a patent cannot be obtained. If the invention has been described in a printed publication anywhere, or has been in public use or on sale in this country more than one year before the date on which an application for patent is filed in this country, a patent cannot be obtained. In this connection it is immaterial when the invention was made, or whether the printed publication or public use was by the inventor himself/herself or by someone else. If the inventor describes the invention in a printed publication or uses the invention publicly, or places it on sale, he/she must apply for a patent before one year has gone by, otherwise any right to a patent will be lost.

Even if the subject matter sought to be patented is not exactly shown by the prior art, and involves one or more differences over the most nearly similar thing already known, a patent may still be refused if the differences would be obvious. The subject matter sought to be patented must be sufficiently different from what has been used or described before that it may be said to be nonobvious to a person having ordinary skill in the area of technology related to the invention. For example, the substitution of one material for another, or changes in size, are ordinarily not patentable.

In generic terms: in determining the patentably of your your invention, the Patent Office must consider utility, novelty, obviousness, and so called "secondary considerations." Generally, if your product or process does something useful that a "close" one does not, then your product would logically be novel. You must then question if the additional features or functions that you are claiming as novel would have been obvious to do for an average person skilled in the field of your invention. If the novelty is clearly not obvious to an average skilled artisan, then your invention would very likely be patentable, all other things being equal. If your invention's novelty is questionably obvious, then the fallback argument, although some what weaker, is to set forth any secondary consideration that relate to the commercial viability of your product over the others in question. For the more complicated case where your invention is questionably obvious, read on...

Patent law is designed to serve the small inventor as well as the giant research organization. One fact to keep in mind is that most, if not all, inventions are combinations and mostly of old elements. Therefore an examiner may often find every element of a claimed invention in the prior art. If identification of each claimed element in the prior art were sufficient to reject patentability of your invention, then very few patents would ever issue. Patent examiners are not allowed to reject patents solely by finding your claimed elements in the prior art. If that were allowed it would permit an examiner to use the claimed invention itself as a blueprint for piecing together elements in the prior art to defeat the patentability of patents. The courts have said such an approach would be an illogical and inappropriate process by which to determine patentability.

You should also be aware that it is not a requirement of patentability that an inventor correctly set forth, or even know, how or why the invention works.

Generally, the claimed invention must be considered as a whole, and the question is whether there is something in the prior art as a whole to suggest the desirability, and thus the obviousness, of making the combination. When determining the patentability of a claimed invention which combines two known elements, the question is whether there is something in the prior art as a whole to suggest the desirability, and thus the obviousness, of making the combination.

To prevent the use of hindsight based on the invention (i.e., viewing the prior-art in terms of what your invention or the art after your filing date teaches) to defeat patentability of the invention, courts require the examiner to show a motivation to combine the references that create the case of obviousness. In other words, the examiner must show reasons that the skilled artisan, confronted with the same problems as the inventor and with no knowledge of the claimed invention, would select the elements from the cited prior art references for combination in the manner claimed.

Courts have identified three possible sources for a motivation to combine references: the nature of the problem to be solved, the teachings of the prior art, and the knowledge of persons of ordinary skill in the art. It is not allowed for the examiner to just rely on the high level of skill in the art to overcome the differences between the claimed invention and the selected elements in the references, and provide the necessary motivation.

Instead, the examiner, if rejecting your claim based on obviousness, must explain what specific understanding or technological principle within the knowledge of one of ordinary skill in the art would have suggested the combination. Otherwise, if a rote piecing together of prior-art elements could suffice to supply a motivation to combine, the more sophisticated scientific fields would rarely, if ever, experience a patentable technical advance. That is, for example, in complex scientific fields, the examiner could routinely identify the prior art elements in an application, invoke the lofty level of skill, and rest its case for rejection. To counter this potential weakness in the obviousness construct, the suggestion to combine requirement stands as a critical safeguard against hindsight analysis and rote application of the legal test for obviousness.

Obviousness is ultimately a question of law that rests on underlying factual inquiries including: (1) the scope and content of the prior art; (2) the level of ordinary skill in the art; (3) the differences between the claimed invention and the prior art; and (4) objective considerations of nonobviousness. Objective considerations such as failure by others to solve the problem and copying may often be the strongest evidence of nonobviousness.

This objective evidence of nonobviousness includes so-called "secondary considerations" such as copying, long felt but unsolved need, failure of others, commercial success, unexpected results created by the claimed invention, unexpected properties of the claimed invention, licenses showing industry respect for the invention, and skepticism of skilled artisans before the invention

The so-called "secondary considerations" provide evidence of how the patented device is viewed by the interested public: not the inventor, but persons concerned with the product in the objective arena of the marketplace.