Novelty

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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

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"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

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