What makes and invention novel, non-obvious and useful?

In the context of a patent application, an invention is considered novel when it is different from all previous inventions (called "prior art") in one or more of its constituent elements. When deciding whether an invention is novel, the PTO will consider all prior art that existed as of the date the inventor files a patent application on the invention or, if necessary, as of the date the inventor can prove he or she first built and tested the invention. If prior art is uncovered, the invention may still qualify for a patent if the inventor can show that he or she conceived of the invention before the prior art existed and was diligent in building and testing the invention or filing a patent application on it.

An invention will flunk the novelty test if it was described in a published document or put to public use more than one year before the patent application was filed. This is known as the one-year rule.

To qualify for a patent, an invention must be non-obvious as well as novel. An invention is considered non-obvious if someone who is skilled in the particular field of the invention would view it as an unexpected or surprising development.

Figuring out whether an invention will be considered non-obvious by the PTO is difficult because it is such a subjective exercise what one patent examiner considers surprising another may not. In addition, the examiner will usually be asked to make the non-obviousness determination well after the date of the invention, because of delays inherent in the patent process. The danger of this type of retroactive assessment is that the examiner may unconsciously be affected by intervening technical improvements. To avoid this, the examiner generally relies only on the prior art references (documents describing previous inventions) that existed as of the date of invention.

Patents may be granted for inventions that have some type of usefulness or utility, even if the use is humorous. However, the invention must work-at least in theory. Thus, a new approach to manufacturing superconducting materials may qualify for a patent if it has a sound theoretical basis--even if it hasn't yet been shown to work in practice. But a new drug that has no theoretical basis and hasn't been tested will not qualify for a patent. The inventor need not show utility to qualify for a design or plant patent.

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