Novelty is just one of the many prerequisites to patentability under U.S. patent law. Put in its simplest terms, novelty for patent law purposes means exactly what the word “novelty” means in its normal usage; the patented invention must be “new.” Thus, a patent application for a simple wheel could be rejected on the grounds that the invention is not novel, i.e. it has been done before. While novelty has a more precise legal meaning, as is the case with most legal terms of art, the example of the wheel is helpful to understand the purpose of the novelty requirement. If someone were allowed to get a patent on the wheel in 2013, that would effectively allow the person to whom the patent was granted to remove that invention from the public domain, since patent rights are rights to exclude. As a result, we only grant patents to those that invent new things because we want patents to serve as incentives to ultimately enrich the public domain upon the expiration of the patent, not because we want to grant monopolies or increase the costs of pre-existing inventions.

Though the legal issues surrounding patent novelty are complex, there are a few basic rules that will serve the future inventor well in preparing to obtain patent rights:

  • The invention cannot have been described in a printed publication (this includes prior patents) anywhere in the world prior to the claimed invention date.
  • The invention cannot have been in public use or knowledge in the United States prior to the claimed invention date.
  • The invention cannot have been described in any printed publication anywhere in the world, and cannot have been on sale or in public use in the U.S. for more than one year prior to the filing date. Bear in mind that unlike the first bullet, this has to do with the filing date rather than the invention date. Inventors should be mindful that they can shoot themselves in the foot by publishing, offering for sale, or using their own invention before they file.

Until recently, the U.S. patent system operated on a “first to invent” basis, whereby the first person to invent a particular invention would in theory be entitled to patent rights. Thus, if someone other than the inventor filed for the patent on that invention, the true inventor could in theory institute an interference proceeding, whereby the inventor would seek to show that he or she has priority insofar as that inventor was the first to invent the invention in question. Following the recent passage of the American Invents Act (AIA), the U.S. patent system has adopted the first to file approach followed in most other countries, wherein the first person to file a patent has rights to that patent. Though the AIA has already been passed, it will take several years before the implications of the change are fully understood, and as a result it is advisable to consult a patent attorney when considering issues of patent novelty under the AIA.