Novelty is probably one of the most misunderstood patent requirements because it seems like it should be easy. The word itself brings to mind fun things like giant pencils or wasabi-flavored ice cream. It’s not exactly something you’d expect to see in the legal system. However, what novelty means in patent law is far more complex than something you’d find in a gag gift aisle.
Possibly the most uncomplicated determination for novelty is to ask yourself if your product or design has anything like it in the entire world. If your answer is no, that’s a pretty clear indication that you’ve met the standard of novelty. However, more often than not, the answer is yes. If that’s the case, you have to determine if your design is different enough from those who came before it to prove it is unique. That is the true challenge of novelty.
What Does Novelty Mean In Patent Law?
Most likely, you don’t have a brand-new idea that’s never, ever been seen before. It’s probably a new twist on an old way of doing things. For example, today’s smartphone stems from early cell phones. Cell phones came from the rotary phones of old. Even the telephone itself was proceeded by the telegraph. All of those examples were patentable because each one differed from its predecessor enough to be considered novel.
The standard for novelty is cited in 35 U.S.C. 102 as it was defined in a patent appeals case from 1962 – In re Bartlett.
“The degree of difference [from the prior art] required to establish novelty occurs when the average observer takes the new design for a different, and not a modified, already-existing design.”
Of course, that leaves a lot of room for interpretation, so novelty is an area that gets confused quite a lot. In layman’s terms, if the average person would view your concept as a new one, you’ve likely met the standard of novelty.
However, there’s one issue that it’s very common to run into that you will have to consider. Many people submit patents for inventions without ever creating the actual device itself. This is especially common in the technology field. Companies may file patents for devices to protect their IP well before they’re ready to move on to production. The idea you’ve had may already have an approved patent application on file.
You’re also going to have to consider something called prior art. If a design is in a public database, then it’s not patentable. This can be even more difficult to understand. The method that you thought was novel could be out there in some obscure scientific journal, making it ineligible for protection.
So if you’re going to prove novelty, you can’t just look at things that are already on the market. Instead, you’re going to have to search through existing patents and public databases to make sure you have the right to claim that design.
Patent and Prior Art Searches to Prove Novelty
Patent and prior art searches aren’t required to apply. However, it is highly unadvisable to proceed without one. If you leave it up to the patent office to determine your invention’s novelty, you’re going to invest a ton of time and money. It’s possible that the process will end in denial when it’s discovered there’s prior art or an existing patent.
Doing a search will help you overcome this. You could also fix any issues with your design that may have disqualified it before you begin the application process. This step isn’t easy, but it will save you a lot of heartache in the long run.
There are three primary ways that you can manage a patent search. You can do it yourself, use an online database or hire an attorney.
- DIY: You will have to scour patent databases and non-patent literature like newspapers, magazines, and even websites to see if prior art exists.
- Online databases: Online databases like LegalZoom will consolidate patents and patent applications and provide an easier path to locating possible issues.
- Attorney review: A patent attorney will conduct a thorough search using proprietary technology and sources to locate all existing patents and prior art.
|| Attorney Guided
||Low cost: The upfront cost of a DIY patent search is probably the only benefit as you will use free resources to begin your investigation. However, the risk of error and time investment means it’s unlikely to be successful and will lead to higher costs down the road.
||Speed: As online databases consolidate a lot of information in a single space, it’s typically much faster to complete a thorough search.
Cost: Database searches cost around $200 to $500, which is a comfortable price point for most inventors.
|Accuracy: A patent attorney will be well-versed in all the necessary steps for ruling out prior patents and art.
Guidance: The attorney can offer detailed advice on the patent search process and help inventors overcome issues.
Application strength: The attorney will consider searches when completing the application to increase the likelihood of approval.
||Accuracy: It’s highly unlikely that a layperson would be able to search through all the sources necessary to ensure no prior art is related to their design.
Time: Without a thorough understanding of the patent system, it will take someone an extremely long time to search the places they need to rule out prior art.
Advice: If you find prior art, you won’t have the advice to differentiate it or prove your design is different.
|Accuracy: Databases are only going to pull patent information. You’re not going to find a lot of detailed information on prior art, which is where most patents will get stuck.
Guidance: While a database may offer a little more information than a DIY search, it’s not going to guide you if you find a match you need to overcome.
|Cost: The attorney-driven patent search will have the highest upfront costs. However, it will even out in the long run as it will allow the inventor to increase their chance of approval.