4. Utility, Prior Art, and Novelty

One fundamental question you may have about patents is: what kinds of stuff can be patented. The short answer is: inventions. But what, exactly, is an invention?

A slightly longer answer is that an invention is something that is new and useful. These, in turn, involve their own explanations.

A much longer answer is that newness and usefulness isn’t enough: there are some kinds of intangibles that might be new and useful, but which aren’t really an invention under 35 U.S.C. § 101 or which Congress has otherwise deemed to be unpatentable subject matter. Examples of the former are scientific articulations of how the world works, such as e = mc² or claims to an invention in terms that are too abstract, such as the idea of escrow exchanges done on a computer, while an example of the latter is 42 U.S. Code § 2181, which prohibits patents on inventions for atomic weapon. However, dealing with questions of patent eligible subject matter at the margins can be a challenging subject for an introductory course on intellectual property. There is a summary of the current state of patent eligible subject matter law at the conclusion of the section on patents, but we will largely skip over the application of Section 101. Instead, we will focus on the core concepts of utility and newness.

Utility

To be entitled to a patent under 35 U.S.C. § 101, a patentee must have invented something useful or something that is a useful improvement of something already in existence. The modern utility inquiry revolves around two main forms of utility: a credible basis for asserting that the invention actually works (credible operability) and that the invention have a practical utility, generally determined based on whether the described utility is both substantial and specific.

Credible utility requires that the invention has a use and that the use is actually possible. An example of an invention that does not have credible utility is a time machine: although this invention presumably would be very useful, it is impossible to make a functioning time machine. Perpetual motion motion machines are similarly impossible.  The patent examiner will presume credible utility unless it is readily apparent that the invention is directed to an impossible undertaking or implausible scientific principle.

For an invention to have practical utility, it must be have some form of real-world utility. The alleged practical utility must be both substantial and specific, meaning that the invention must have “a significant and presently available benefit to the public” and “a use which is not so vague as to be meaningless.” In re Fisher, 421 F.3d 1365 (Fed. Cir. 2005)

Novelty 

A second fundamental requirement for obtaining a patent is that the invention be new. In patent law, the term for newness that is used most often is “novelty,” although you will sometimes hear the question framed in terms of whether the invention is “anticipated.”

The concept of novelty

The next two cases, Manning v. Cape Ann Isinglass & Glue Co. and In re Lister address the question of what does it mean for an invention to be “new” in the eyes of the law. One dimension of novelty is whether the inventor was actually the first person to come up with the invention or whether someone else sought a patent or disclosed the invention to the public first.  A second dimension is whether the inventor him or herself shared the invention with the public before filing a patent application.

Central to novelty is the statutory framework, codified today at 35 U.S.C. § 102.  Although the governing statute has changed over time – most recently, by the America Invents Act in 2011 – its core language has remained largely unchanged since these cases were decided (with one major change, the shift to basing novelty solely on the date of filing discussed below).  For reference, here is the relevant text of the 1870 Patent Act:

Novelty and the statutory framework

In addition to understanding the basic inquiry for the novelty analysis, it is also important to know the statutory framework, 35 U.S.C. § 102.  This section establishes two key components of the novelty analysis: (a) what activities or materials can constitute prior art and (b) the key dates that apply to the analysis.

Which version of § 102 applies?

A challenge in understanding § 102 is that components of this section were changed by the 2011 America Invents Act, and the impact of those changes is still manifesting.  Thus, prior to discussing 35 U.S.C. § 102, it is important to first cover the transition from the old statutory framework to the new AIA framework. The effective date of the new § 102 framework under the AIA was March 16, 2013. Any applications with effective filing dates on or after this March 16, 2013 are analyzed under the AIA framework for § 102.  We will primarily focus on the “new” version of § 102, but recognize that some patents and a few new applications may still be subject to the “old” version.

“New” section 102(a) states that:

References qualifying as prior art under 35 U.S.C. § 102(a)(1) are commonly referred to as “One-time-period prior art,” because they involve analysis of only one event, while references qualifying as prior art under 35 U.S.C. § 102(a)(2) are called “Two-time-period prior art” because they require analysis of two events: the original filing date and the subsequent publication of the application or issuance of a patent.

Under 35 U.S.C. § 102(a)(1), the categories of one-time period prior art are: (a) patented, (b) described in a printed publication, (c) in public use, (d) on sale, and (e) otherwise available to the public.  To anticipate the invention (i.e.: render it not novel), the activity must take place prior to the effective filing date of the application whose patentability or validity is being analyzed. Two-time-period prior art under 35 U.S.C. § 102(a)(2) consists of patent applications filed prior to the effective filing date of the application in issue that was published or issued as a patent at some later time.

In addition, there are a set of “exceptions” provided in 35 U.S.C. § 102(b).  Generally, these take the form of self-disclosures by the inventor less than one year before the effective filing date.  In most cases, however, attorneys are reluctant to advise clients to rely on these exceptions, however, as there are several uncertainties about their scope and they almost never apply to patent applications filed in other countries.