Novel vs. Non-obvious in Patent Law

Industry expert Tony O'Lenick asks: What is the difference between novel and obvious in patent law?

According to the 35 US Code, Section 101: 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 …

This first section of the US Patent Act identifies three requirements in order for a patent to be awarded—the invention or discovery must be useful, novel and non-obvious. This first requirement, usefulness, is covered in Section 101 of the Patent Act. It is generally not an issue. The second requirement, novelty, is the heart of patentability. The third and equally important statutory requirement for awarding a patent under US law is that the claimed invention must be non-obvious.

Novelty and non-obvious are defined in Sections 102 and 103 of the US Patent Act, respectively. An invention lacks novelty when each and every one of its elements previously has been described or discovered. Those elements that have previously been described or discovered are referred to as “prior art.” The lack of novelty, also called anticipation, can thus be viewed as a “direct hit in prior art.”

Regrettably, in patent law, the concept of obviousness is far from the term's common usage. The statutory requirement of "non-obvious" is found in Section 103 and states that “obvious” subject matter is an idea that would have been obvious to a person of ordinary skill in the art. "Obvious" concepts are not patentable when the teachings of one prior art reference are viewed in combination with the teachings of one (or more) different prior art references.

Thus, obviousness deals with near-direct hits by a single anticipatory reference. Where every element of a patent claim is found through the combined teachings of two or more prior art references, the claimed idea is not patentable.1

The determination of what is obvious is a legal, not a technical, question. Consequently, chemists should work closely with the legal department to understand questions related to novelty or obviousness. Generally, if chemists were to define inventions in terms of what is different about them, better and clearer patents would result. Patent lawyers and inventing chemists should thus partner during the patent process.

1. L Paul and A O’Lenick, Patent Peace of Mind, Allured Publishing: Carol Stream, IL USA (2008) p 21

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