What does it mean to be novel and inventive?
For most inventions the biggest hurdle for getting a patent granted is showing that the invention is novel and inventive over the prior art. Understanding these requirements is important when deciding whether to pursue a patent application, and for going through the process of patent examination.
This article follows on from our recent piece on Patents for academics: Is my research a patentable invention?
Prior art
Prior art means anything that has been made available to the public before the date you file your patent application. This includes academic papers and other technical documents, other patent applications, and commercially available products. It can also include anything presented in a talk, products that have been publicly tested, or even something that has been shown to one member of the public.
Prior art can come from anywhere in the world, not just the country you’re applying for a patent in. It also For more information, refer to our article: Patents for academics: Confidentiality and publishing.
Novelty
A novel invention is a product or process that hasn’t been made available to the public before. Your invention won’t be considered novel if a single piece of prior art has every feature of your invention in the same configuration. If your invention has a feature that isn’t found in the prior art then it may be novel. Similarly, if you need to combine two or more pieces of prior art to get all of the features of your invention, your invention may be novel.
For example, if you create a new chemical with functional groups A, B, C, and D, your invention will be novel over a similar chemical that only has functional groups A, B, and C. This is the case even if functional group D is well known in your field. However, while this chemical might be novel, it will still need to be assessed for inventiveness.
Inventive step
Inventive step is about whether your invention would be obvious in view of what has already been done before. You don’t need to have a ground breaking new idea for it to be considered inventive. ‘Obvious’ in patents means ‘obvious to a person who is skilled in your field, but who doesn’t have any creativity at all’.
Inventive step is assessed by comparing your invention to the prior art. During examination, a patent examiner will assess whether your invention is an obvious modification of the prior art, or in some instances, an obvious combination of features from two or more pieces of prior art.
In the example above, a patent examiner might say that it’s obvious to take the known chemical with functional groups A, B, and C, and add in the well-known functional group D. In this case, you’d need to come up with a convincing reason why that modification isn’t obvious to get your patent granted.
Some of the ways that your invention can have an inventive step include using features that people wouldn’t usually consider, using known materials for previously unknown properties or effects, or having parts of your invention interact in an unexpected or synergistic way.
Searching
Knowing whether your invention is novel and inventive requires knowing what has been done before. For most researchers part of this will be conducting a literature review. It’s also very helpful to search for patents on similar technology.
At AJ Park we can search and analyse patents from more than 40 different countries to help you understand what a patent examiner is likely to refer to. This can guide your decision on whether or not to pursue a patent application, and helps us prepare a patent specification that will give you strong and useful protection for your invention.
As former researchers, we understand the challenges that researchers face. Our journey into the world of intellectual property has provided us with the insight and expertise to share back with the communities we started in. If you need help assessing the patentability of your ideas, get in touch.
