Patentability: The Novelty Requirement of 35 U.S.C. 102

By Gene Quinn
June 10, 2017

Novelty[NOTE: This article is part 2 of our Patentability Overview series. To start reading from the beginning please see Patentability Overview: When can an invention be patented?]

Despite the impression given by the low hurdle presented by the first two patentability requirements (i.e., eligibility and utility), not every invention is patentable. One of the most common problems for applications is 35 U.S.C. §102, which sets forth the doctrine of anticipation by requiring novelty of invention. Essentially, §102 requires the patent applicant to demonstrate that the invention is new. In essence, in order for a claimed invention to violate this “newness” requirement it must be exactly identical to the prior art.

Anticipation

In order to understand the requirements of §102 it will be helpful to explore the concept of anticipation in detail. A claim is said to be “anticipated” if comparison of the claimed invention with a prior art reference reveals that each and every element in the claim under attack is shown or described, organized, and functioning in substantially the same manner as in the prior art reference.

Anticipation is perhaps most easily understood as the converse of infringement: “That which will infringe, if later, will anticipate, if earlier.” So one way to look at whether your invention is new, as is required under the meaning of §102, is to ask whether your invention would infringe another patent already issued. In the situation where the reference is not a patent but is a printed publication ask whether your invention would infringe if the printed publication were an issued patent instead of just a printed publication.

The standard for anticipation (and hence for newness) is a rigorous one; requiring that every element of the claimed invention, as arranged in the claim, be disclosed either specifically or inherently by a single prior art reference. To be sure, every element of the challenged claim need not be expressly delineated in a single prior art reference, but may be inherently disclosed by prior art if “the prior art necessarily functions in accordance with the limitations” of the challenged claim. However, if the decision-maker (i.e., judge or patent examiner) must go beyond a single prior art reference, the proper challenge is under 35 U.S.C. §103 for obviousness, not §102 for novelty. A reference will, however, anticipate a claim if it discloses the claimed invention such that a skilled artisan could take its teachings in combination with his own knowledge of the particular art and be in possession of the invention.

Pre-AIA §102

Effective March 16, 2013, the United States changed its patent laws to move from a first to invent jurisdiction to a first to file jurisdiction. The America Invents Act (AIA) is responsible for making this change, and the importance of the change is difficult to overstate. First to file really must be interpreted as requiring inventors to file first before disclosing the invention. If you happen to disclose the invention before you file a patent application you really need to file fast – there is still some hope you can obtain a patent due to the presence of a grace period, but the grace period is very narrow and should not be relied upon.

For applications filed on or before March 15, 2013, first to file laws will apply. It is also possible that applications filed on or after March 16, 2013 will be examined under first to file laws as well, but if and only if all of the claims in the application are entitled to a priority date of March 15, 2013 or earlier.

So-called pre-AIA novelty law (i.e., the law applied for applications filed on or before March 15, 2013, or applications with all claims having priority on or before March 15, 2013) is rather peculiar at first glance.  Not all references, knowledge or events that demonstrate an invention is “old” or already known can be used by patent examiners to reject a patent claim. Before we go to far down this path lets set some definitive rules:

  • If the invention in question was described in a patent issued anywhere in the world prior to the patent applicant inventing it, then no patent can be obtained.
  • If the invention in question was described in a printed publication published anywhere in the world prior to the patent applicant inventing it, then no patent can be obtained.
  • If the invention were publicly known in the US, but not necessarily patented or published, prior to the patent applicant inventing it, then no patent can be obtained.

In each of these three cases we would say that the earlier reference or knowledge is prior art that prevents a patent from now issuing.

Now some more rules:

  • If the invention in question was described in a patent issued anywhere in the world more than 12 months prior to a US application being filed, then no patent can be obtained.
  • If the invention in question was described in a printed publication published anywhere in the world more than 12 months prior to a US application being filed, then no patent can be obtained.
  • If the invention in question was publicly used in the US more than 12 months prior to a US application being filed, then no patent can be obtained.
  • If the device, machine or compound in question was offered for sale in the US more than 12 months prior to a US application being filed, then no patent can be obtained.

In each of these four cases we would also say that the earlier reference, knowledge or event is prior art that prevents a patent from now issuing, but this time not because the invention was not new, but rather because an application was made in the US too late!

 

AIA §102

One of the biggest changes to U.S. patent laws brought about by the AIA relates to the move from a “first to invent” system to a “first inventor to file” system. Saying that we have a first to file system, however, might be a little misleading given that the term “first to file” has certain international meanings that do not apply.

A pure first to file system is one that demands absolute novelty in order to obtain a patent. A pure first to file system means that if there is a use, sale or publication of information relating to the invention prior to the filing of a patent application no patent can be obtained. This is not exactly what the U.S. first to file system mandates.

Inventors should start with the presumption that if there has been a disclosure of the invention prior to filing a patent application in the U.S. no patent can be obtained. However, if the disclosure of the invention was made by the inventor and occurs within 12 months of the filing of a patent application in the U.S. the disclosure can be removed as prior art. If the disclosure is by someone other than the inventor and that other, third party did not obtain the invention information from the inventor it may be impossible (and likely will be impossible) to remove the disclosure as prior art, which is why first to file rules must be interpreted as requiring inventors to file first!

Under the U.S. first to file system it is true that the inventor will still have a personal grace-period to remove their own disclosures. This personal grace-period says that the inventor’s own disclosures, or the disclosures of others who have derived from the inventor, are not capable of being used as prior art as long as they occurred within 12 months of the filing date of a patent application. However, and this is a very big however, disclosures of third-parties who independently came up with the invention information themselves will be used against the inventor unless the disclosure is of the same subject matter.

What does this mean? The Patent Office has given an example, using letters. Inventor discloses XY prior to filing a patent application. A third party obtains the XY disclosure and in turn discloses XYZ. The Patent Office explained that at least what is different – in this case Z – will be used as prior art against the inventor and cannot be removed as prior art.

It is difficult to come up with realistic hypothetical examples where the grace-period will likely be useful in an AIA universe. Inventors should, therefore, operate under the assumption that there will be virtually no chance that a grace-period will exist relative to third party, independently created disclosure. This is an enormous difference between the old law and the new law.

While it is true that some grace-period does remain, no one should rely on the grace-period. At best, the AIA 102 grace-period should be thought of as an possible way to address the mistake of not having filed first. The AIA 102 grace-period should never be relied upon before the fact by inventors. It is just too fragile.

CLICK HERE to CONTINUE READING… Up next will be discussion of the obviousness requirement under 35 U.S.C. § 103. Please also see: Understanding Obviousness and When is an Invention Obvious?

For more information on patent basics please see:

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 4 Comments comments.

  1. Benny June 11, 2017 5:28 am

    “A reference will, however, anticipate a claim if it discloses the claimed invention such that a skilled artisan could take its teachings in combination with his own knowledge of the particular art and be in possession of the invention”

    This should be self-evident, but is sometimes ignored by US examiners and denied by attorneys replying to office actions.

  2. Edward Heller June 11, 2017 4:21 pm

    You know Gene, something that has always bothered me about the law in that the public use of a product will anticipate even if no one knows what the composition is or how to make it.

    Take the case of Pennock v. Dialogue. The inventor came up with a way of making fire hoses that no one else could duplicate because of the process and materials in making the hose. The hose itself was publicly sold under the authority of the inventor. Apparently, when others begin to understand how the hose was made, the inventor went off and applied for patent.

    Ultimately it was ruled that the public use of the firehose and placing it on sale prior to filing a patent application (the grace period was yet to come) was an abandonment of the right to file a patent application: an equitable defense that is now known as a “statutory bar.”

    But the principle of prior art must be that the invention is known to the public and in the public domain. If one cannot reproduce the patented product, in the case of Pennock, the patent firehose, because one does not know exactly what the materials and process it takes to make that product, then is the product really prior art to another who not only discloses what the product is in his patent application, but a method of making it?

    Consider a product by process claim. Disclosure of the product itself does not disclose process. I hope we can agree that the disclosure of the product itself does not anticipate the claim.

    I have had actual cases where this issue was important. It has always seemed to me that if the product sold does not disclose the invention in a way that the public can understand not only what it is, but how to make it, than that the product cannot anticipate.

    This is somewhat the law with respect to published references. If the reference is not enabling, it is not anticipatory prior art. Why is not the law the same with respect to products?

  3. Gene Quinn June 11, 2017 9:29 pm

    Edward Heller-

    There are a lot of things about the law that bother me. My pet issue along these lines is that a reference in a language the inventor does not speak or read will anticipate. That doesn’t strike me as fair or appropriate if the idea of a patent system is the dissemination of knowledge. Exactly how is information in a language not spoken by the masses contributing to the knowledge base? Perhaps today with the existence of machine translations it isn’t as big an issue as it once was, but before machine translations and in an era where U.S. patent laws were protectionist it never made much sense to me.

    -Gene

  4. Ned Heller June 12, 2017 11:57 am

    Thanks Gene, and I agree.

    BTW, my arguments re: constitutionality of IPRs has finally prevailed. The Supreme Court will take Oil States.

    No. 16-712
    Title:
    Oil States Energy Services, LLC, Petitioner
    v.
    Greene’s Energy Group, LLC, et al.
    Docketed: November 29, 2016
    Linked with 16A365
    Lower Ct: United States Court of Appeals for the Federal Circuit
    Case Nos.: (2015-1855)
    Decision Date: May 4, 2016
    Rehearing Denied: July 26, 2016
    Questions Presented

    ~~~Date~~~ ~~~~~~~Proceedings and Orders~~~~~~~~~~~~~~~~~~~~~
    Oct 13 2016 Application (16A365) to extend the time to file a petition for a writ of certiorari from October 24, 2016 to November 23, 2016, submitted to The Chief Justice.
    Oct 14 2016 Application (16A365) granted by The Chief Justice extending the time to file until November 23, 2016.
    Nov 23 2016 Petition for a writ of certiorari filed. (Response due December 29, 2016)
    Dec 12 2016 Waiver of right of respondent Michelle K. Lee, Director, Patent and Trademark Office to respond filed.
    Dec 19 2016 Order extending time to file response to petition to and including January 30, 2017.
    Jan 30 2017 Brief of respondent Greene’s Energy Group, LLC in opposition filed.
    Feb 14 2017 Reply of petitioner Oil States Energy Services, LLC filed.
    Feb 15 2017 DISTRIBUTED for Conference of March 3, 2017.
    Feb 27 2017 Response Requested from Michelle K. Lee, Director, Patent and Trademark Office. (Due March 29, 2017)
    Mar 22 2017 Order extending time to file response to petition to and including April 28, 2017.
    Apr 28 2017 Brief of Federal Respondent in opposition filed.
    May 15 2017 Reply of petitioner Oil States Energy Services, LLC filed.
    May 16 2017 DISTRIBUTED for Conference of June 1, 2017.
    Jun 5 2017 DISTRIBUTED for Conference of June 8, 2017.
    Jun 12 2017 Petition GRANTED limited to Question 1 presented by the petition.