Novelty and Non-obviousness – Demystified

A patent application requires an awareness of two concepts: novelty and non obviousness. These are used in reference to prior art and are important in the process of patenting. Not sure what these legal terms mean? Well, read on.

Before getting to know the highlights of this post, novelty and non obviousness, it is important to know what makes them so important. According to Patent Law, every invention must satisfy four requirements to be eligible for a patent. Those requirements are novelty, non obviousness, utility and subject matter. Of these, novelty and non obviousness are quite infamous for being the factors that leave a room for discussion between a patent examiner and an applicant.

Novelty and non obviousness are similar, though it is the subtle differences between them that define the quality of a patent application.

The term novelty of is derived from the word “novel,” which means “new.” In patent language, novelty determines the “new” in the invention. It takes into account

  • the result of a one to one comparison of the features of an invention with each prior art for that invention, where prior art refers to any patent application, publication or public working that precedes the effective filing date of your patent application

On comparing the features, if you find that none of the prior art documents have all the features of your invention, the invention is novel. Congratulations!

Testing for novelty is synonymous to a “spot the difference” exercise. The following image illustrates the novelty aspect of a patent. The image on the left is that of a glass vessel with a resealable lid from patent application US 20130075356; the one on the right is a normal glass vessel, which forms the prior art.

While the body of the patented glass vessel is present in the prior art, the absence of the resealable lid in the prior art makes the invention novel.

Now let’s understand what non obviousness is. While the prior art that is used in non obviousness determination is the same as the ones used in novelty determination, the manner in which they are used differs. In novelty determination, the focus is on a single prior art that has all the features of an invention. However, in non obviousness, the examiner focuses on combining multiple prior art to achieve a mosaic with all the features of the invention. This process is called mosaicing.

A prerequisite for mosaicing is the prior art must be combined from the perspective of a person possessing normal skill in the field of invention. Also, the person must be motivated to combine the prior art documents. The motivation can result from the documents themselves or from his or her general knowledge of the invention. Moreover, the prior art must stem from a field similar or in some way connected to the field of the invention.

To determine non obviousness of your invention, consider a layman with basic educational qualifications in the field of the invention. He or she has all the basic experience in the field, but no specializations. Given the various prior art, would he or she be able to recreate the invention without major hassles? The answer to this question can indicate whether the invention is non obvious or not. It is also important to acknowledge the inventor’s considerations when he or she creates the invention and the efforts taken by the inventor to  reduce it from a concept.

Finally, it has been noted that while novelty is a question of fact, non obviousness is a question of law; so when in doubt about non obviousness, consult a patent agent or a patent attorney.



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