Your Basic Guide to Novelty and Inventive Step in Patent Filings
When our clients inquire about protecting their ideas and innovations with a patent, they often request clarification regarding “novelty” and “inventive step.” These are two crucial elements in obtaining a granted patent, it is beneficial to provide an explanation.
This is a test to determine whether the innovation is new.
The claimed invention must be “novel”. It implies that no one could have disclosed it to the public anywhere in the world before the filing date. Any prior disclosure of your invention, whether written, spoken in person, shared on social media or broadcast – for example, in a video or podcast (even if subsequently deleted) can invalidate the novelty of a patent. Therefore, if you are thinking of patenting your idea, it is vital that you do not disclose your invention before the filing date. If not, you can risk losing its novelty.
However, during the examination of your patent application by the patent office, it is common for disagreements to arise over the novelty of a claimed invention. This is a common factor to arise as an objection during the examination phase of your patent application process. An objection like this can be easily overcome. Your patent attorney should have a strong position to argue your case and offer you the best advice for handling patent office objections related to novelty.
This test sets out to prove that the “novel” feature in your invention adds a useful technical effect. In other words, is it something clever that improves that technology sector? Inventive step means that there must be enough of an improvement between the disclosed invention and existing technology to permit the granting of a monopoly right.
The test for this is often “Would the claimed invention be obvious to a person skilled in the art?”. In other words, would someone from that or a similar field of technology but with no inventive capability have come up with it? Would it have been obvious to them? The difficulty with this is that there are likely to be different interpretations of what someone “skilled in the art” would look like, and indeed different jurisdictions have different tests to determine inventive step. Whilst a little more challenging to resolve than novelty, the bar for inventive step is often much lower than you might expect. A well-placed patent attorney should argue the case. It is recommended to liaise with a patent attorney in this area to save difficulties later on.
How can Pure Ideas help?
With a team of experienced attorneys, we’re more than happy to assist and support you with some further advice on novelty or inventive step. Please get in touch.