If an invention is not new, it cannot be patented.  Since a patent gives its owner the right to exclude others from practicing the claimed invention for up to 20 years from filing, this requirement is necessary in order to prevent persons from taking technology out of the public domain that otherwise would be available for anyone to use.

 

A determination of whether a discovery falls within the patent statute’s definition of “new” requires comparing that discovery with what was known in the “prior art.”  Novelty does not exist if all the claimed elements or components of a product or process are present in a single piece of prior art.  If that single piece of prior contains all the claimed elements or components, it is said to “anticipate” the claim.  However, it is not necessary that all of the elements or components be expressly described in that prior art.  Under the judicially created doctrine of inherency, a single piece of prior art is considered to inherently anticipate a patent claim if all the elements of the claim would invariably have existed based on what is described in that prior art.

 

Determining what does and does not constitute “prior art” can be a complicated inquiry.  The governing statute is Section 102 of the U.S. Code, which sets forth a number of criteria that can act to bar the granting of a patent and that are often referred to as “statutory bars.”  Actions taken by the inventor himself or herself can also result in statutory bars; an inventor therefore cannot wait indefinitely to file a patent application.

 

Section 102(a)

 

This section of the patent statute provides that a person shall be entitled to a patent “unless 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.”

 

“Known…by others in this country” has been interpreted to mean knowledge that is accessible to the public.  Private or secret knowledge is not publicly accessible and thus cannot block issuance of a patent.  Additionally, the knowledge must have been available in the U.S. and have been sufficiently detailed to enable a person of ordinary skill in the field to which the invention pertains to practice the invention.

 

“Used by others in this country” has similarly been interpreted to require that the use be public, i.e., no active steps were taken to conceal the invention.  However, the public use need not have enabled someone to make and practice the claimed invention.

 

“Before the invention thereof by the applicant” provides the opportunity for an applicant to establish, for example, that a printed publication does not qualify as “prior art” since it was published only after he or she had made the invention.  This is sometimes referred to as “swearing back” of a reference and usually requires submitting research records to the Patent Office as evidence of when the invention was made.  (See Keeping Good Research Records Can Help Protect Your IP)

 

Section 102(b)

 

This section of the patent statute bars the granting of a patent if “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 date of the application for patent in the United States.”  If an inventor waits more than one year after first describing his or her invention in a publication or putting it in public use or on sale in the U.S., the right to patent that invention will be forfeited.  It should be noted that nearly all countries other than the U.S. are “absolute novelty” countries with no corresponding “grace period.”  Section 102(b) also places a one year limit on the ability of an applicant to prove a date of invention earlier than a piece of prior art.

 

“In public use” generally is interpreted to mean that the use was accessible to the public; a secret use usually will not be a bar to patentability.  Experimental use, where the use of the invention is for the purpose of developing, perfecting or testing, also may not constitute a statutory bar.  A “printed publication” can be anything that is printed and available to the public in any country without any secrecy restrictions.  Among the types of prior art that may be self-generated by inventors or their sponsors or collaborators are graduate theses, proposals, requests for funding, research reports, conference presentation materials and scientific articles.  “On sale” has been interpreted to mean not just actual sales involving the invention, but also offers for sale.  An invention is considered to be “on sale” when a) a product embodying the invention is the subject of a commercial sale or sales offer and b) the invention is “ready for patenting” (i.e., it has been reduced to practice or the inventor possesses a description of the invention that is sufficiently specific to enable a person ordinarily skilled in the art to practice it).  (See U.S. Supreme Court Determines when an Invention is “On Sale”)

 

In some cases, the possibility that the activities of others working in collaboration with an inventor may give rise to a statutory bar to that inventor’s ability to obtain patent protection can be circumvented by including appropriate provisions in a Collaborative Research Agreement.  (See A Properly Drafted Joint Research Agreement will KO Secret Prior Art)

 

 

Although U.S. patents and published applications constitute “printed publications” and thus are prior art under Sections 102(a)&(b) as of their publication date, Section 102(e) further provides that such patents and published applications are prior art as of their effective U.S. filing date (this includes the priority date of earlier filed U.S. applications and certain PCT applications).  (See 35 U.S.C. §102(e))  This can make it difficult to thoroughly assess the novelty and patentability of an invention at the time an application is filed, since ungranted, unpublished applications relevant to that invention may have been filed by third parties that cannot be found in a patent landscape search.

 

In view of these statutory requirements, it is highly recommended that a patent application be filed as soon as possible after an invention has been made in order to minimize the possibility that the invention cannot be patented for lack of novelty.  However, care should be taken to ensure that the application contains an adequate and enabling description of all the commercially significant embodiments and aspects of the invention as well as sufficient proof of concept and data supporting the efficacy and benefits of the invention, where such information is considered important to securing allowance of a valid patent.