Patenting novelty

The legally trained member of the interdisciplinary committee should provide insight as to the significance of the technological advance and as to whether any commercial product ultimately derived from the invention could be protected by an issued patent. Another important function of this person is to determine the scope of the invention based on preceding events, pubHcations, or activities which may have otherwise limited the breadth of the invention. To this end, U.S. law requires that an invention satisfy a number of prerequisites or requirements before issuing a patent novelty, nonobviousness, utiHty, and disclosure. 

U.S.C. 102 Conditions for patentability novelty and loss of right to patent. 

Since patent novelty is a somewhat abstract concept in the absence of context, it is helpful to consider another example. Gas liquid chromatography instruments... 

The utility requirements having been satisfied, it is necessary to establish that the invention represents a significant advance and is not merely an obvious development devoid of patentable novelty. 

Another possibility would be to define the molecule to be patented by its function and claim forms of this polypeptide having the same function. Highly innovative patents will have better chances with this approach than less innovative ones. In the USA this may be considered as an attempt to claim patent rights on the end result rather than on the particular means by which the result can be achieved. Except for pioneering inventions, functional claims without sufficient qualifying structural elements are usually rejected, since these do not define the patented novelty with a reasonable degree of particularity and distinctness (see US Manual of Patent Examinating Procedure, "MPEP", 5th. ed.. Rev. 9 706.03 c,d, 1988). 

Lack of novelty may be indicated by all kinds of earlier publications or other disclosures of the invention to the public. As already mentioned, prior publication by the inventor or applicant also interferes with novelty and can be used as an argument against their own patent application. This does not fully apply to US inventions, the content of which can be published by the inventor within 12 months before filing a patent. Novelty of an invention may also be contested by the proof that the invention was already in use, for example, as a manufacturing process which was kept secret. 

There are three basic requirements for patentability novelty non-obviousness or inventive step and usefulness or industrial applicability. Each requirement may differ from country to country and is set forth by the statutes and regulations of each country. 

International Phase The PCT filing results in an International Search and the issuance of an International Search Report, a Written Opinion (which comments on the three aspects of patentability (novelty, obviousness and utility) as they apply to the claims, and possibly comments on other matters as well), and an International Preliminary Examination Report (IPER). WIPO will also publish the patent application 18 months after the priority date. The designation WO... in the upper right hand of what many call a patent actually indicates that the document is only a published PCT patent application, not a patent. The PCT patent application is itself never prosecuted to allowance. The filing allows an applicant to defer further action (and... 

The Imitator. The imitator looks to others for the discovery of new leads, then quickly enters the field with some structural modifications, hoping to carve out a piece of patentable novelty before the field is saturated. 

Only those syntheses merit development that offer patentable novelty as chemical processes and that furnish an important product. At the outset of development, and at its conclusion, the structure and properties of the final product are already known. It possesses the desired therapeutic effect in an animal model of the human disease and the potential to serve an existing market. Development efforts are not devoted to improving the biological profile of a clinical candidate by finding a successor or a back-up drug. 

After completing the process of claim construction, POE, and the NPTF-IG key phrases extraction methodology, the target patent and the related prior art patents are analyzed to identify patent novelty. An invention is patentable if it satisfies specifications for novelty. Novelty is defined in Section 102 of the US Patent Law The invention is novel if it was not previously patented, described in a publication, in public use, or on sale by others before the inventor invented it. Trappey et al. [35] use non-exhaustive overlap clustering to analyze patent documents with multiple technical descriptions of the invention. The results show that key phrases... 

The examiner can reject the claims based upon novelty, usefulness, or obviousness. In doing so, the examiner typically recites the portion of patent law that forms the basis for the rejection. For example, a novelty rejection is a 102 rejection after 35 U.S.C. 102, Conditions for patentability novelty and loss of right to patent. An obviousness rejection is known as a 103 rejection. Such a rejection should consider the scope and content of the prior art, the differences between the prior art and the claimed invention, the level of ordinary skill in the pertinent art at the time the invention was made, and whether any objective evidence of non-obviousness exists. The examiner can combine several references when making an obviousness argument but it should be reasonable for one skilled in the art to combine the references. 

These databases are generally obtainable from the various patent offices, or from specific suppliers such as the Derwent WPI or CAS MARPAT on STN. Other databases also contain information derived from patents (e.g., Beilstein is particularly good for patents before 1960), but the term patent database is used here to indicate the collection of data with the prime aim of providing a comprehensive service with respect to patent novelty, rather than a database of factual data in the sense of this article (although patent databases may well contain such information). 

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