Patent Application Drafting – Considering Novelty and Obviousness

Most inventors understand the importance of keeping an invention secret until they have a patent application on file. So it is no surprise that once they have a complete idea of the invention or have developed a working prototype, they are eager to begin the patenting process and be at liberty to discuss the invention, initiate marketing and begin to seek funding.

Yet drafting a patent application is not a trivial task. Inventors who try to short-cut the process do so at their peril. Among the common misconceptions of patent applications is the understanding of the legal terms “novelty” and “obviousness.”

In order to obtain a patent, the invention must be defined in the application in terms known as “claims,” which describe the required elements of the invention.  Each claim must be fully supported by the description in the body of the application, which is known as a “specification.”  For example, if our invention is a chair, the claim might state:

“A seating device comprising a seat, four legs, a back and two arms.” 

Here, the claim has four elements:

(1)    a seat

(2)    four legs

(3)    a back

(4)    two arms. 

The specification, therefore, must fully describe the four elements, teach how to make and use the chair invention and, ideally, point out the advantages and differences between the claimed chair invention and what was previously known.

The patent application and the invention claimed must meet several requirements: (a) novelty, (b) non-obviousness, (c) enablement and (d) written description. In other words, it must include a sufficiently detailed description so that someone working in the same area of science or technology would understand that the inventor actually had the invention in hand at the time the application was filed.

All of these requirements must be initially addressed in the specification because it is rare that the information can be changed once the application has been filed.

What makes this task more complicated is that the meaning of each of these four requirements is not necessarily what a scientist or engineer would envision.

Novelty

Take the requirement for novelty, for example.  To most scientists and engineers – in fact most lay people – “novelty” means just what the Merriam-Webster dictionary says: “The quality or state of being new, different, and interesting; something that is new or unusual; something novel.”

But in patent law, novelty doesn’t mean exactly that.  Instead, novelty means that when an Examiner searches the patent, scientific, and popular literature (“prior art”) that was published before the earliest filing date for the application, she or he cannot find one single publication that has each and every element of the claim.

To illustrate, consider our claim for a chair.  If an Examiner’s prior art search finds a publication that describes a four-legged stool, that publication is lacking elements (3) and (4) – a back and two arms.  So our invention would have novelty compared to the four-legged stool publication.  Similarly, if the Examiner finds a publication for a beach chair that has a back, two arms, and a seat which is a piece of fabric that lays on top of the sand, that beach chair publication lacks element (1) – four legs.  So our invention, again, has novelty when compared to this publication.

Clearly, if a search of the prior art was done before beginning to draft the patent application, these publications would likely have been identified.  Then it would be possible to point out the differences between the invention and the publications and discuss the advantages of the claimed invention.  It would also be possible to describe other features of the invention, for example a foot rest, that did not appear in any of the publications identified and, while it might not initially be claimed, it could later be added to the claim if need be.

Non-obviousness

Like novelty, the terms “non-obviousness” and “obvious” also have a special meaning in patent law.  Once more, the focus is on the elements of the claim.  But while novelty requires that each and every element of the claim is present in a single publication, in order to destroy non-obviousness and show that an invention is obvious, an Examiner is allowed to combine two or more references so that each and every element of the claim is represented.

Turning again to our chair invention, the Examiner could state that the claimed chair is obvious in view of the four-legged stool and beach chair publications.  Certainly, the combination of these two publications describe each and every element of the claim.  The four-legged stool lacks the back and arms, but these are provided by the beach chair.  Conversely, the beach chair lacks four legs, but these are provided by the four-legged stool.

Once again, the benefits of conducting a prior art search before patent application drafting begins are apparent.  Here, we would appreciate that while we have novelty over these two publications, the invention could be considered obvious.  So we could then further define the invention to include the footrest, for instance. Since nothing is discussed in the four-legged stool publication about a footrest and similarly nothing appears in the beach chair publication, including the foot-rest in the claims could provide both novelty and non-obviousness.

Because the disclosure in a patent application cannot be altered once it has been filed, it is critical that the application is thoughtfully drafted and that a prior art search has been conducted.  This allows the invention to be fully described and helps the inventor focus his/her efforts on altering the initial product/method design to achieve both novelty and non-obviousness, which in turns provides the best chance to move through the patenting process to granted patent with the minimal amount of argument and expense.

Susan Gorman, Ph.D., Esq., is principal of Gorman IP Law, a law firm focused on helping companies leverage intellectual property assets to maintain a competitive advantage, enhance market share, plan for growth and better manage resources and expenses. Through a proprietary process, Gorman IP Law helps businesses build a formal IP strategic plan that defines your business goals, establishes benchmarks and allows you to better project costs. Dr. Gorman can be reached at susan.gorman@gormaniplaw.com.

The information contained herein has been prepared by Gorman IP Law, APC, for informational purposes only and is not legal advice.