What Is Novelty in Patent Law?

When learning how to patent an idea, the inventor needs to consider novelty which is one of three standards an invention must meet to be considered patentable by the U.S. Patent and Trademark Office.

An invention must be novel (new), useful, and non-obvious in order to be granted a patent. The invention can't be prior art, which includes anything found in printed media or described in a patent application. If the invention is deemed prior art, the submitted patent cannot be protected.

In the U.S. (a "relative novelty" country), there is a grace period of up to one year from the original date of public disclosure. That means even after you publish or begin selling your invention, you have one year to file for a patent. If filing for a patent, this one-year period is not part of the novelty consideration, and novel status still applies.

If you plan to file in other countries, keep your idea under wraps. In most European and Asian countries ("absolute novelty" countries), there is no grace period. However, European countries do have an exception that allows you to receive a patent if the public disclosure was made without your consent. In that case, you have a grace period of six months in which to file.

Japan is also an absolute novelty country, but an exception has recently been added to patent law. This allows you to file a patent application within six months of an invention being published in printed form or through any form of electronic communication.

Why Is Novelty Important to a Patent?

Because a patent gives a person the legal right to an invention, patent protection is necessary for an inventor. Without patent protection, competitors can take the idea and make it their own. When this happens, there's no legal action an inventor can take. To maintain a novel status and not fall under prior art, an idea must:

  • Not be shown to any third party, including friends and family.
  • Remain out of media, including journals, magazines, websites, etc.
  • Not be considered common knowledge to experts in the field.
  • Not have gone on sale prior to the patent filing.
  • Not have been built by a person that abandoned or concealed the idea.

There are still some loopholes when meeting the novelty standard, and each case is reviewed by the U.S. Patent Office. Before applying for a patent, find out if there's prior art similar to your invention. If so, be prepared to explain how your invention is new and different enough for a patent. Inventors may also consider a provisional patent, which is a quick and fairly inexpensive way to start the patent process, making it easier for the inventor to file ahead of competitors.

As a general rule, inventors should always submit their idea as soon as possible, so their patent will not be dismissed based on novelty.

Obviousness in Deciding Novelty

Closely related to the novelty is obviousness. To receive a patent, an invention cannot be obvious to either a professional in the industry or non-experts.

Obviousness isn't always easily figured, and many inventors unknowingly void their idea. Printed hints and suggestions that allow others to easily reach the same idea can make the invention obvious. For instance, an article may explain a specific problem and propose, in general terms, a solution. If your invention fits that description, it will be considered obvious — especially if the publication is one that others in your field are likely to read.

Your case is stronger if your invention combines ideas from multiple publications. However, a patent application may still be rejected if the various sources reference one another or are obviously linked in some way.

Foreign patents are also part the prior art and obvious considerations. In one particular case, a surgical company took many of the ideas of a Japanese bipolar surgical instrument and made their own product. Because of the similarities to the original idea, the patent was voided. Further reviews and legal action did not change the ruling.

To make matters more difficult, an invention can be both obvious and novel. One example cites an inventor who described a system for cleaning the manure from a barn without manual labor using a water tank, flushing system, and sloping floor. While the idea had never been patented, the Supreme Court ruled that a water tank and sloping floor were obvious inventions, and the patent application was rejected.

Usefulness and Novelty

Another obstacle to satisfying the novelty portion of a patent deals with usefulness. Very simply, this principle separates the practical from the abstract or aesthetic. A perpetual motion machine, for instance, has no practical use and is therefore ineligible for a patent. However, something that has useful results in any type of industry, including farming, falls under a novel idea and could be patentable.

In other countries, usefulness is often described as "industrial application."

Anticipation and Novelty

Anticipation (taking an idea one step beyond the obvious) is another pitfall for potential patents. If an earlier invention is a pre-cursor to a more recent idea and it's generally proven that the new invention was the next step in product evolution, it's not a novel idea. However, two separate ideas that are combined to form a new product could be a novel idea, making the invention patentable.

The Supreme Court and Novelty

The Supreme Court has repeatedly stated that these ideas aren't novel or useful, and as a result, aren't patentable:

  • Abstract Ideas
  • Products resulting from natural phenomena
  • Laws of Nature

Anything falling under those three topics cannot receive a patent. However, these four categories are patentable:

  • Compositions of Matter
  • Articles of Manufacture
  • Processes
  • Machines

This list intentionally covers almost anything man-made. Where other countries might disqualify an entire category of invention, such as software, the broadness of U.S. patent law encourages innovation in every field.

Foreign and Domestic Novelty Considerations

As in the case study involving the Japanese surgical tool, it's important to take note of both foreign and domestic novelty considerations. Cases that destroy the novelty aspect include:

  • If the idea or invention was described in any patent throughout the world more than a year ago
  • If the idea or invention was in print media anywhere in the world over 12 months ago
  • If the invention was for sale in the U.S. for over a year
  • If the invention was in use in the U.S. for more than 12 months

In the U.S., patents are granted on a first-come, first-serve basis. To be granted a patent for an invention, you must be the first person to apply for it.

Common Mistakes

Some inventors make terrible errors that end up making their invention or idea unpatentable. To avoid ruining a patent, inventors should:

  • Never print, discuss, or show their idea or invention without first filing a patent.
  • Investigate prior art before filing their patent.
  • Avoid abandoning an idea on the basis of prior art (changing parts that aren't obvious may still qualify the invention as novel).

Steps to File

If you think your idea or invention is novel, filing a patent to protect your work is the next step. First, you have to decide which type of patent your invention falls under:

  • Utility
  • Design
  • Software
  • Plant

Then, choose the correct type of patent:

  • Provisional Patent
  • Non-Provisional Patent
  • International Patent

Before submitting your patent application, you may want to hire an attorney to do the paperwork. The patent will then be reviewed by a patent office to determine whether you will get a patent on your product.

If you need help with establishing novelty in your patent application, you can post your question or concern on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Stripe, and Twilio.