If you’ve ever applied for a utility patent before, you’re probably familiar with the three primary considerations that dictate whether you can obtain a patent or not: usefulness, novelty, and non-obviousness. With only three requirements to fulfill, it sounds easy to get a patent, doesn’t it? On the contrary, it can take many years to negotiate your way to patentability with an examiner, if you can at all. Moreover, even if you are able to eventually obtain a patent, too often the issued claims are riddled with superfluous limitations that render the patent essentially worthless. The novelty and non-obviousness requirements are what make it challenging to obtain a patent. Let’s take a closer look at these two requirements.

Novelty

Under the requirement of novelty, a person is entitled to a patent unless 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 the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention”. In other words, the claimed invention has to be “new”. You could have the most original invention on the planet, but if it is claimed in a way that makes it too similar to what has been done before (also called the “prior art”), it won’t be patentable. When an invention lacks novelty, that means every aspect of an invention’s claims is explicitly or inherently present in a single prior art reference.

Non-Obviousness

As you may deduce, defining a “novel” invention is not an overly daunting task. Unless your invention is a carbon copy of something that already exists, there is likely at least one difference that, thus, makes it “novel”. However, the much more complex challenge (both for an inventor and a patent practitioner) is creating and claiming an invention that is non-obvious. Obviousness (or lack thereof) boils down to whether a person of ordinary skill in a particular field would find it obvious to modify a piece of prior art to arrive at your invention. Those potential modifications often include introducing one or more “modifying” references that fill in gaps that the primary piece of prior art lacks. 

There are limits to this – impermissible hindsight by the patent examiner is not allowed to reconstruct an invention – but the non-obviousness requirement can be difficult to navigate. Put simply, your invention really does need something truly creative and original about it to warrant receiving a patent. Due, in part, to the subjectivity involved, non-obviousness is the highest bar to clear to reach patentability. In order to circumvent existing publications, patents, and the like, it often becomes most expedient to introduce a structure that clearly differentiates it from what has been done before, but is not so specific that a competitor could make a tweak or two to get around your patent. This is where critical thought, ample preparation, and excellent patent aid can help you.

Some Tips for Defining a Patentable Invention (That Has Value)

As is clear from the above, homing in on what makes your invention truly unique is critical. After you’ve done that, the claims to the invention should focus on those aspect(s). Claiming specific details that don’t contribute to the overall inventive concept should be avoided. For example, it probably doesn’t matter that you used four bolts to couple two components together versus three bolts. It also probably doesn’t matter that you used a single-piece component to achieve the same ends of something that was previously done with two components fixed to one another. A great way to ensure the inventive concept is “focused” in your patent disclosure and claims is to brainstorm different ways you could put your invention into practice. After you’ve done that, consider what is shared across those varying implementations. Those commonalities could form the basis of broadly defining a patentable invention that makes it difficult for your competition to get around.

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