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Novelty Requirement: Must be New
“New” is sometimes a confusing term in law
“Anticipated by Prior Art” is a discovery that in
some way already exists or is already known
Since already exists or can easily be invented
based on readily available knowledge, no need to
encourage innovation
Disclosure more than 12 months earlier in another
patent filed in another country means not new
Sometimes inconsistent treatment of prior art
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Novelty Requirement in General
Any patent application must be NOVEL
Statutory bar on any public disclosure of
ideas more than twelve months prior to patent
application (in USA, with shorter periods
applied in many other countries)
Grace period of 12 months, but prior
knowledge means innovation is not NOVEL
Anticipation also defeats NOVELTY
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Statutory Bar and NOVELTY
If prior to twelve months before application,
the following events occur, can not patent:
Domestic: Prior patent by anyone, publication,
public use, sale.
Foreign: Prior patent by anyone, publication, prior
patent APPLICATION by APPLICANT.
Foreign usage and sales NOT considered.
Foreign Patent Application starts from date of
initial application (but only if patent granted)
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Anticipation and NOVELTY
Anticipation does not have 12 month period
of grace, and applies only to events that
occur before the patent claim was invented:
Domestic: Prior patent, publication, unconcealed
invention by others, use by others, description in
another’s patent application
Foreign: Prior patent by anyone, publication.
Public usage discloses innovation’s benefits
and anticipates innovation, even if the
innovation itself remains a hidden secret
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The Race to Patent – First to File
Priority of claims – first to invent has priority, if
he can show continuous diligence in
“reduction to practice” from before time of
second invention conception.
Practical issue – first to file patent application
has presumption of priority, and is viewed as
time of “reduction to practice” and proof
otherwise is burden of preceding inventor.
Possible outcome is no one can patent!
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Race to Patent Paradox (p. 65)
KEY: Red line indicates continuity of uninterrupted diligence
Conception Reduction to Practice
Conception Reduction to PracticeDiligence
Conception Reduction to PracticeDiligence
C
B
A
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The Race to Patent
Diagram on p.65 of textbook reading
Who has priority and why?
What does “reduction to practice” mean?
What does diligent efforts mean?
How can you PROVE that you were first?
How can you PROVE that you were diligent?
How can you PROVE “reduction to practice”?
How is timing of patent application relevant?
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Utility Requirement
Must do something useful
Many countries outside US also REQUIRE
actual commercial usage to file patent
In USA, burden is generally on PTO (government)
to show that innovation is not likely to be useful
However, must state some way in which product
or process applied for under patent is useful
Stated utility need not be only useful application
Drugs often patented for one use and used for others
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Best Way to Show Utility is Sales
A product with commercial sales is clearly
useful to someone who is paying for it
However, watch out for Novelty BAR if sales
come prior to the patent application
12 months in the USA, BUT SHORTER PERIOD
in some countries, especially in Europe
Best approach is to file application for patent,
and THEN start commercial sales
If sales grow quickly, clear evidence of utility
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Why is Utility Important?
As matter of policy, patents are granted by
the US constitution for “useful arts”
Patent ACT also only protects “useful” inventions
In practice, this requirement is easy to meet
for most products.
Intermediary wholesale products more difficult
Chemical intermediate used in labs not allowed to
be patented as it was not useful “to the public”
Need to focus on SOME useful value to “public”
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What Degree of Usefulness is Need?
Courts have said that no specific level of
usefulness is required; only SOME useful
application for the product or process needs
to be identified.
However, novelty or curiosity alone is not
sufficient reason to issue a patent, even if
there is a commercial market for the product.
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Creative Marketing and Utility
Marketing efforts may claim benefits which do
not actually exist, or which are difficult to
prove (or disprove).
Fabrication of utility claims is not sufficient to
provide legally recognized benefits – selling
claimed benefits is not the same as actually
providing benefits to customers.
Therefore, sales alone might not be sufficient.
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Illegal or Immoral “Innovations”
Any innovation which is harmful to individuals
or to society is not considered to offer any
benefit and therefore can not be patented.
Patent may be issued if there is SOME legal
and beneficial usage, even if there are
abuses
Many drugs which relieve pain are also addictive
and abused by some individuals illegally, but can
be issued patents for their beneficial utility
What about patenting weapons for killing?
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Presumed Utility
Utility MUST be asserted and claimed.
There is no presumption of utility in application
Process may not be viewed as useful even if
it does something “productive” if the output is
not clearly useful from the process
Intermediary chemical example – it is useful to
someone in some process in labs, but it was not
clear how this would benefit society in general
Utility must be PROVEN, not just claimed
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Open-Ended Patents Prohibited
Patent must be for some defined purpose, or
utility, and not an open “hunting license”
Other uses may be found for patented
product or process, but the patent protection
is limited ONLY to practical uses described in
the patent application.
Large firms often file many “derivative” patents on
latter discovered useful innovations from earlier
issued patents to extend the patent reach.
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Specific and Substantial Utility
You must claim and support a specific utility
for your innovation as part of your patent
application submitted for review
Your claimed specific utility must also have
some real and substantial benefits
However, these benefits need not be proven, and
reasonable support for substantial utility is enough
Example of drug that works in animals and which
might work for people enough, even if later the
drug does not work in the field research.
