This resource outlines why novelty of an invention is important in patents and how to address this when you come up with a new product or method.
In the patent world, the concept of novelty holds paramount importance. It is one of the three requirements an invention has to meet in order to be granted a patent. Novelty revolves around the fundamental principle that for an invention to be granted a patent, it must be genuinely novel. This means it should significantly differ from previously published works, known techniques, and marketable commodities.
While novelty can be a fairly abstract concept in the real world, in the realm of patent law, this can be described in very concrete terms.
NOT YET PUBLIC
Novelty means that the invention has not been disclosed to the public in any form, including but not limited to, online platforms, printed materials, or any other medium.
This principle is far-reaching and encompasses published patents and non-patent literature. This includes even minor public disclosures such as an article in a local newspaper, a display at an exhibition, or a PowerPoint presentation made accessible to the public anywhere globally. It also includes non-confidential disclosures pertaining to the invention to third parties such as prospective customers, investors, business partners or contract manufacturers. Essentially, if an invention has been exposed publicly at any moment, it is no longer possible to have it protected by a patent.
Another form of public disclosure, which is common in larger companies, is advertising or marketing new product features that reveal the features of the invention in a way that allows it to be reproduced.
In some cases, engineers or researchers in a company, in their eagerness to disclose innovative products or methods in scientific conferences through submission of papers or panel sessions, can also destroy the novelty of an invention.
Any public disclosure can destroy the novelty of the invention. It’s important to note that whether someone has used the knowledge is irrelevant. Similarly, whether or not anyone comprehended the information they obtained is inconsequential. What is crucial is whether the disclosed information is adequate to reproduce the invention. Thus, the focus is on the nature of the information disclosed, not the recipient. It suffices when the details about the solution are accessible to a broader audience than just its inventors or the individual authorized to file the application.
While some countries provide a grace period for filing after public disclosure, this is only for a limited time period and may not be long enough if the applicant is not aware that a disclosure has taken place. It also severely limits the countries you can protect the invention in.
Purpose of Novelty
The concept of novelty in patent law serves the purpose of deciding which inventions deserve protection and which do not. It prevents a situation when protection is granted to two identical inventions. The way novelty is assessed by the respective Patent Offices is the filing date of the patent application.
A filing date is important in patent law because it establishes who created the invention first and therefore the rights to the invention. If someone else filed a patent application for the same invention at a later filing date anywhere in the world, your patent application pre-dates the other patent application and it will lose novelty because of your patent application.
Keep your invention secret before filing patent application
You should not reveal, sell, licence or advertise the invention to the public before applying for a patent.
If you disclose your invention publicly before filing a patent application, you may limit your patenting options and you may have a limited time to take action. If you need a third party to assess or help with the invention, make sure they sign a confidentiality agreement before revealing your invention.
File a Provisional Patent Application if disclosure is imminent
If you need to disclose your invention imminently, it is advisable to file a provisional patent application in order to preserve novelty of the invention. It is a quick and relatively inexpensive way to declare the invention as your own. When you file a provisional patent application with a Patent Office, you declare the rights to your invention because you will be issued a patent application number together with a filing date.
A provisional patent application is different from a complete patent application as it does not contain claims (numbered paragraphs at the end of a patent specification) that defines the scope of the invention. Drafting a proper set of claims require significantly more investment as it requires an experienced patent attorney to draft them.
A provisional patent application provides only temporary protection because it only lasts 12 months from the filing date. To keep your protection after the 12 months, you will need to convert the provisional patent application into a complete patent specification. In other words, the provisional patent application provides a way to put one foot in through the door by obtaining a filing date.
If you have any questions or need further advice on filing provisional patent applications, please contact us.