How “Novel” or “Non-Obvious” Must an Invention Be To Be Eligible for Patent Protection?

An invention is only eligible to be patented if it is both novel and non-obvious.

An invention is not novel if each element of the invention was publicly disclosed in a single document in the “prior art,” before the patent application was filed.  The prior art includes other patents or applications, published articles or research, and other public information. 

An invention is obvious if a skilled practitioner the relevant field could combine one or more documents in the prior art, along with general knowledge in the field, to obtain each element of the invention.  An invention is only obvious if a skilled practitioner would have a reason to combine those different documents to produce the invention.      

In deciding whether an invention is obvious, courts and the United States Patent and Trademark Office, carefully evaluate the knowledge and skills of a typical skilled practitioner in the field.  They consider, for example, the typical educational level of workers in the field, the types of problems those workers routinely solve, and what information is widely known in the field.    

The novelty and non-obviousness requirements guard against someone obtaining a patent on something that has already been invented or is merely a combination of publicly known information that does not add anything new.  The Supreme Court has explained that an invention should not be granted a patent if it merely combines familiar elements, according to known methods, to produce predictable results. 

The Patent Office determines that an invention is novel and non-obvious prior to issuing a patent.  Patent law, however, provides for third parties to challenge already-issued patents in the Patent Office, mainly through a process known as inter partes review.  That’s a trial-like process where an accused infringer can provide evidence to the Patent Office to show that the patent is not novel or is obvious. 

Patents can also be challenged in federal court.  In court, there is a presumption that the Patent Office correctly found the patent novel and non-obvious.  To show that the patent does not meet those requirements, a challenger must provide “clear and convincing evidence” showing that the invention was not novel, or was obvious, as of the date the patent application was filed.

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