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Novelty

Creation of Adam

Novelty is defined in the United States by 35 USC 102 as follows:

“(a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless—
(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or …”

In general, novelty requires that the claimed invention must not have been “described in a printed publication, or in public use, on sale, or otherwise available to the public” before the effective filing date (or priority date) of the invention. Everything that is “described in a printed publication, or in public use, on sale, or otherwise available to the public” forms part of the “prior art”. Whether the claimed invention is novel or not is determined in relation to the “prior art”.

A claim is anticipated only if each and every element (feature) as set forth in the claim is found in the prior art reference. It must be either expressly or inherently described, in a single prior art reference. The identical invention must be set out in complete detail as described in the claim. The elements must be as arranged in the claim. It is not a requirement that the exact same words are used in the prior art reference. (MPEP 2131, 2020)

In patent prosecution, a lack of novelty is also known as anticipation. If a single anticipating reference contains all of the elements or features of a claimed invention, the invention as claimed is said to have “been anticipated by” the reference. (WIPO, 2022) 

Otherwise Available to the Public

Library

"Otherwise available to the public” is a “catch-all” provision that provides for a “catch-all” category of prior art that was not covered previously. The question to be answered is whether the prior art was made available to the public. It does not matter that nobody took notice of it. The prior art may be made available to the public when it is contained in a student thesis in a university library. It may also be contained in a poster display or other information disseminated at a scientific meeting. (MPEP 2152.02(e), 2020)

Grace Period

Grace Period

In the United States, the grace period is applied where an inventor's own work may be considered as prior art. It is when the inventor's own work has been publicly disclosed by the inventor, a joint inventor, or another who obtained the subject matter directly or indirectly from the inventor or joint inventor. The disclosure must not be more than one year before the effective filing date of the claimed invention. 

Therefore, the disclosure is not prior art if the disclosure was made: 

1. One year or less before the effective filing date of the claimed invention; and 

2. By the inventor or a joint inventor, or by another who obtained the subject matter directly or indirectly from the inventor or joint inventor. (MPEP 2153.01, 2020)

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MPEP 2131. (2020, 06 25). 2131 Anticipation. Retrieved 08 16, 2022, from Manual of Patent Examining Procedure: https://www.uspto.gov/web/offices/pac/mpep/s2131.html

MPEP 2152.02(e). (2020, 06 25). Otherwise Available to the Public. Retrieved 08 16, 2022, from Detailed Discussion of AIA 35 U.S.C. 102(a) and (b): https://www.uspto.gov/web/offices/pac/mpep/s2152.html

MPEP 2153.01. (2020, 06 25). Prior Art Exception Under AIA 35 U.S.C. 102(b)(1)(A) To AIA 35 U.S.C. 102(a)(1) (Grace Period Inventor-Originated Disclosure Exception). Retrieved 08 16, 2022, from 2153 Prior Art Exceptions Under 35 U.S.C. 102(b)(1) to AIA 35 U.S.C. 102(a)(1) [R-11.2013]: https://www.uspto.gov/web/offices/pac/mpep/s2153.html

WIPO. (2022). WIPO Patent Drafting Manual (Second ed.). Geneva, chemin des Colombettes, Switzerland: World Intellectual Property Organization. doi:10.34667/tind.44657

Attribution

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https://creativecommons.org/licenses/by/3.0/

Attribution

Grace Period (Time to Act) Image

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About

We have electronic engineering degrees as well as law degrees. We have done a three-year course on intellectual property. 

We assisted a client in New York to respond to a rejection (office action) of a non-provisional patent by the examiner at the USPTO (the United States Patent and Trademark Office). We had a telephone interview with the examiner. Our amendments were successful, and the patent has subsequently been granted as US9233507B2. This was largely a software/algorithm patent.

We also drafted for the same client another non-provisional patent (3d-printing) which was also filed at the USPTO. This patent has also been granted as US9435998B1.

We drafted patents for a client in Melbourne Australia for a betting system and a cryptocurrency wallet.

We have drafted a patent for a client in California. This included the text and the drawings. we also handled the Office Action in this case. A patent was granted at the USPTO with the number US 10,406,075B2. A patent was also granted at the Canadian Patent Office for the same invention as CA3029662C.

For a client in Washington state, we drafted four design patents, two utility patents and registered one trademark.

For a German company TMRW International S.a r.l. we did 5 prior art searches and subsequently drafted the 5 patents. We are currently drafting patents for a US patent attorney located in Michigan. We have done 4 so far.

Our prices are very reasonable.

Email: ipworkspace248@gmail.com

References

1. Javier Peñalba. Email: javier.penalba@tmrw.com 

2. Matthijs Van Leeuwen. Tel.: Washington State +14254492559. Email:

        matt@dutchdogdesign.com

3. Arthur Allen Mogilefsky. Tel.: California 805 904 6164 Email: mogel@charter.net

Patentable Subject Matter

 

35 USC Section 101

In title 35 of United States Code, (effective as from March 16, 2013) section 101 defines patentable inventions as follows:

“Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, my obtain a patent therefore, subject to the conditions and requirements of this title.”

In the United States there are generally 2 criteria to determine whether the invention qualifies as patentable subject matter.

One of the Categories

First, the claimed invention must be to one of the four statutory categories as mentioned in section 101. Section 101 names the four categories of invention deemed to be the appropriate subject matter of a patent. They are processes, machines, manufactures and compositions of matter, or any new and useful improvement thereof.

Figure 1: Machine

Four Judicial Exceptions

Secondly, the claimed, invention also must qualify as patent-eligible subject matter. There are four judicial exceptions which are not paten-eligible subject matter. They are abstract ideas, laws of nature and natural phenomena and including products of nature.

Abstract ideas, laws of nature, and natural phenomenon "are the basic tools of scientific and technological work". Monopolizing these tools by granting patent rights may impede innovation rather than promote it.

Figure 2: Abstract Idea

Exception to the Four Judicial Exceptions

The claim must not be directed to a judicial exception unless the claim as a whole includes additional limitations amounting to significantly more than the exception.

An invention is not considered to be ineligible for patenting simply because it involves a judicial exception. Therefore, the mere fact that a mathematical equation is required to complete the claimed method and system does not doom the claims to not being patentable subject matter. The integration of an abstract idea, law of nature or natural phenomenon into a practical application may be eligible for patent protection. 

Something More Additional Steps

A distinction must be made between patents that claim the building blocks of human ingenuity and those that integrate the building blocks into something more. The overall process may be patent eligible because of the way the additional steps of the process integrated the equation into the process as a whole. However simply implementing a mathematical principle on a physical machine, namely a computer, is not a patentable application of that principle. An abstract idea, law of nature, or mathematical formula could not be patented. However, an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.

Alice/Mayo Test

Figure 3: Alice/Mayo Test

The Supreme Court (citing Mayo, 566 U.S. 66, 101 USPQ2d 1961) laid out a framework for determining whether an applicant is seeking to patent a judicial exception itself, or a patent-eligible application of the judicial exception. See Alice Corp., 573 U.S. at 217-18, 110 USPQ2d at 1981. This framework, which is referred to as the Mayo test or the Alice/Mayo test. The first part of the Mayo test is to determine whether the claims are directed to an abstract idea, a law of nature or a natural phenomenon (i.e., a judicial exception). If the claims are directed to a judicial exception, the second part of the Mayo test is to determine whether the claim recites additional elements that amount to significantly more than the judicial exception The Supreme Court has described the second part of the test as the "search for an 'inventive concept'". Alice Corp., 573 U.S. at 217-18, 110 USPQ2d at 1981 (citing Mayo, 566 U.S. at 72-73, 101 USPQ2d at 1966). (USPTO MPEP, 2020)

We draft patents.

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Email: ipworkspace248@gmail.com

USPTO MPEP, U. S. (2020, June 25). 2106 Patent Subject Matter Eligibilty. Retrieved August 8, 2022, from uspto.gov: https://www.uspto.gov/web/offices/pac/mpep/s2106.html

 Figure 2: Image by rawpixel.com

Why Patent?

 What Does a Patent Do?

The question often arises why bother to patent? Well, let's firstly see what a patent is. The 35 US code section 101 states:

“Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”

Figure 1: Invention

Further the 35 US code section 154 (a) (1) states:

“Contents-

Every patent shall contain a short title of the invention and a grant to the patentee, his heirs or assigns, of the right to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States, and, if the invention is a process, of the right to exclude others from using, offering for sale or selling throughout the United States, or importing into the United States, products made by that process, referring to the specification for the particulars thereof.”

A patent, therefore, is a negative right. It does not give you the right to do something. It gives you the right to prevent others from doing something. It gives you the right:

“… to exclude others from making, using, offering for sale, or selling the invention …. or importing the invention, …”

What Use Does a Patent Have?

Figure 2: Patent Usage

A patent is an asset in your estate whether you're a natural person or a legal entity. You can sell a patent, or you can license a patent and earn an income from it. It, therefore, increases the value of a legal entity like a company. It also creates trust in the technology of the company if a company can show that its technology is justified and protected by a patent. People are therefore more inclined to invest in a company that has protected intellectual property like patents. If you are a natural person a patent is a good indication that you have some creative ability. Therefore, a patent increases your value as an employee. It shows some form of accomplishment. A natural person is also more inclined to receive a grant to do research if the field of his research is protected by intellectual property.

Patents Generate Wealth

Figure 3: Wealth

According to TechRepublic (Rayome, 2018) the top 10 most innovative countries, based on the number of patents issued per capita are:

1. Taiwan

2. Israel

3. United States

4. South Korea

5. Japan

6. Switzerland

7. Denmark

8. Sweden

9. Finland

10. Germany

According to WorldAtlas (Mala, 2021) some of the above countries have the following ranking as the richest countries in the world GDP per capita.

5.   Switzerland at $70 276.6

8.   United States at $65,279.5

11.  Denmark at $60,334.8

15.  Germany at $55,891.2

16.  Sweden at $55,027.4

19.  Finland at $51,619.8

30.  Korea, Rep. at $42,728.0

33.  Israel at $41,1947.6

It is of course true that countries' earnings per capita also depend on other things such as natural resources. However, having regard to countries like Japan and Switzerland having no or little natural resources it is clear that innovation and patenting plays a key role in the earnings per capita of a country.

We draft patents.

Contact us.

Email: ipworkspace248@gmail.com

Mala, A. (2021, November 22). The 15 Richest Countries in the World. Retrieved August 1, 2022, from WorldAtlas: https://www.worldatlas.com/articles/the-richest-countries-in-the-world.html

Rayome, A. D. (2018, September 11). The 10 Most Innovative Countries in the World. Retrieved August 1, 2022, from TechRepublic: https://www.techrepublic.com/article/the-10-most-innovative-countries-in-the-world/

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