Lecture: Basics of Novelty in Patent Law

Introduction

• Welcome to week two of PATMA.
• Focus: Novelty, a key patentability requirement.
• Substantive and procedural requirements must be met for patent applications.
• Novelty will be tested if you litigate or enforce your patent.

Novelty in Patent Law

• Patent Invalidity Challenges: A patent can be challenged as invalid if it is not novel, is obvious, not useful, or disclosures are unsatisfactory.
• Presumption of Validity: Once the patent is issued, it is presumed valid. To challenge, clear and convincing evidence is needed.
• Statutory Sections:
  • Novelty: Section 102
  • Non-obviousness: Section 103
  • Utility and disclosures: Sections 101 and 112
  • Patentable subject matter partly court-defined, partly in Section 101.

Basics of Novelty

• Concept: Patents aren't given for what's already known (prior art).
• Exclusive Rights: Patents provide exclusive rights to make, use, sell, or offer the patented invention.
• Novelty Requirement: The invention must be new compared to what already exists.
• Prior Art: Previous patents, publications, or public uses that show the invention already exists.

Key Questions in Novelty

• Disclosure: What must prior art disclose to anticipate a patent claim?
• Public Disclosure: What counts as a public disclosure?
• Timing: When must the disclosure occur to count as prior art?

Current Legal Framework

• America Invents Act (AIA) 2011: Applies to applications filed on/after March 16, 2013.
• Section 102A:
  • Entitlement to a patent unless the invention was publicly available before the effective filing date.

Grace Period (Section 102B)

• 12-month Grace Period: Inventors have a year to file after public disclosure.
• Conditions:
  • Disclosure by the inventor grants a grace period.
  • Disclosure must be within 12 months of the filing date.

Examples

• Exercise 1A: No patent if someone else publishes first before the effective filing date.
• Exercise 1B: Patent allowed if inventor discloses first, even if others publish later.
• Exercise 1C: No patent if the filing exceeds 12 months after the inventor's own disclosure.

Single Reference Rule

• Requirement: A single prior art reference must contain all elements of the patent claim.
• Example: Multiple references combined don't bar a patent under novelty, but might under non-obviousness.

Conclusion

• Review discussion questions and prepare for quizzes or assignments.
• Next lectures will continue exploring novelty and other patent requirements.