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

In order to understand the requirements of §102 it will be helpful to explore the concept of anticipation in a little 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 case 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 court must go beyond a single prior art reference, the proper challenge is under §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.

For more information on this topic please see:

• What is Prior Art?

• There is no prior art for my invention

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