The patent system has specific requirements that an invention must meet to be granted a patent. Two of the most important requirements are novelty and nonobviousness. Let’s explore these requirements and how inventors can overcome them to obtain a patent.
The Novelty Requirement
The novelty requirement states that an invention must be new compared to what is already known as prior art. This means that if an invention already exists or has been described in any printed publication, used or offered for sale, it cannot be considered novel. The claimed invention, which is the scope of protection sought through the patent, must be different from what already exists.
To meet the novelty requirement, inventors can modify their claims during the patent application process. By amending the claims to include additional features or relationships not found in the prior art, inventors can ensure that their claimed invention is considered new and unique.
The Nonobviousness Requirement
The nonobviousness requirement states that an invention must not be an obvious variation of the prior art. In other words, the difference between the claimed invention and what already exists should not be something that any person with common sense would come up with easily. To increase the nonobviousness of an invention, inventors can narrow the scope of their claims, making it less likely that the invention would have been obvious to others.
However, determining what is considered nonobvious can be subjective. While there are tests and criteria to assess nonobviousness, such as teaching away or hindsight rationale, common sense plays a significant role in this evaluation. What may seem obvious to one person may not be so obvious to another. The examiner considers factors like whether the prior art discourages the combination suggested by the inventor or if the examiner used the inventor’s specification as a blueprint to arrive at the claimed invention.
Overcoming Novelty and Nonobviousness Rejections
When facing novelty or nonobviousness rejections, inventors cannot change the prior art. They need to work with what already exists. However, they can modify their claims to redefine their invention. By narrowing the claimed invention, inventors can distance it further from the prior art, increasing the chances of meeting both the novelty and nonobviousness requirements.
It is important, though, to strike a balance when narrowing the claimed invention. Overdoing it may result in a patent that is easy to design around, decreasing its value. Inventors must carefully consider the breadth of patent protection they want to maintain while increasing the patentability of their invention.
To support their case, inventors should include detailed descriptions in their provisional and nonprovisional patent applications. These details may not be claimed explicitly, but they provide backup arguments to help narrow the claimed invention when necessary.
Garrity Traina is a leading authority in patent law and can provide expert guidance and assistance throughout the patent application process. Visit Garrity Traina’s website to learn more about their services and how they can help you navigate the complexities of obtaining a patent.
MPEP Section 210o also offers various standards and guidelines for demonstrating nonobviousness, providing valuable resources for inventors seeking to meet this requirement.
By understanding and satisfying the novelty and nonobviousness requirements, inventors increase their chances of obtaining a valuable patent that protects their innovative ideas.