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By J.D. Houvener
Patent Attorney and Founder

Novelty in patent law often brings to mind whimsical ideas like oversized pencils or unique ice cream flavors. However, in the realm of intellectual property, it represents an important and complex requirement. While the concept seems straightforward—your invention must be new—it involves meeting certain legal standards to establish its uniqueness. Understanding novelty is key to differentiating your invention in a world brimming with innovation.

What Is the Concept of Novelty in Patent Law?

The concept of novelty in patent law is fundamental but often misunderstood. At its core, novelty means that an invention must be genuinely new and not previously known. It’s not enough for a product or design to be merely unique; it must be distinctively different from anything else that exists globally. This differentiation goes beyond surface-level uniqueness; it delves into the essence of the invention, scrutinizing every aspect to ensure there’s nothing like it anywhere in the world. This stringent criterion safeguards the integrity of innovations, ensuring that patents are granted only to truly original creations.

The Legal Definition of Novelty

The legal definition of novelty in patent law is encapsulated in 35 U.S.C. 102 as it was defined in an appeals court case, In re Bartlett, in 1962. This court stated, “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.” This definition creates a nuanced threshold for novelty, where the difference must be significant enough to be recognized as a separate and innovative contribution to the field. This legal framework ensures that patents are reserved for genuinely original and distinct advancements.

Challenges with Novelty: Prior Art and Unmaterialized Inventions

One of the primary challenges in establishing novelty in patent law is navigating the realm of prior art. Prior art includes any public knowledge, publications, or existing patents related to the invention in question. Even if an invention seems new, it might align too closely with prior art, negating its novelty. Additionally, a significant hurdle arises with unmaterialized inventions, particularly prevalent in the technology sector. Inventors and companies often file patents for ideas or prototypes not yet actualized. This proactive approach can lead to situations where one files for a patent for an idea before they are ready to produce their invention and there is already be an approved patent application for a similar idea. 

Conducting Patent and Prior Art Searches

Conducting thorough patent and prior art searches is a critical step in the patent application process. These searches are not mandatory, but skipping them can lead to significant challenges later. By carefully searching through existing patents and public databases, inventors can assess whether their invention truly meets the novelty requirement. This process involves examining various sources, including earlier patents, scientific journals, and other publications, to ensure that the invention has not been previously disclosed or patented. Undertaking this due diligence helps identify potential obstacles early on, such as existing similar inventions, which could impede the patent’s approval. Although time-consuming, these searches are vital for validating the uniqueness of the invention and avoiding future legal complications.

Methods of Conducting Patent Searches

There are three primary methods for conducting patent searches, each with its own set of advantages and drawbacks. The first is a do-it-yourself (DIY) approach, where inventors personally scour patent databases and non-patent literature like journals, magazines, and websites. While cost-effective, this method often lacks thoroughness and accuracy due to the inventor’s limited experience in patent searching. The second method involves using online databases such as LegalZoom, which streamline the search process. These databases offer speed and some cost savings, but they might miss crucial non-patent literature. The third method is hiring a patent attorney. An attorney brings experience and access to specialized resources, ensuring a comprehensive search, though at a higher cost. Each method balances cost, thoroughness, and expertise differently.

Bold Patents Can Help Determine If Your Invention is Novel

At Bold Patents, our team of experienced attorneys is dedicated to guiding you through the complexities of patent law. We provide personalized, professional assistance in conducting thorough patent searches and ensuring your invention stands up to the novelty requirement. Reach out to us for a consultation to secure the protection your innovation deserves.

  DIY Online Database   Attorney Guided
Pros 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.

Cons 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.
About the Author
J.D. Houvener is a Registered USPTO Patent Attorney who has a strong interest in helping entrepreneurs and businesses thrive. J.D. leverages his technical background in engineering and experience in the aerospace industry to provide businesses with a unique perspective on their patent needs. He works with clients who are serious about investing in their intellectual assets and provides counsel on how to capitalize their patents in the market. If you have any questions regarding this article or patents in general, consider contacting J.D. at https://boldip.com/contact/