Novelty

Cross-referenced

Basis for rejection

The specific legal grounds a patent examiner cites when refusing to allow a claim. Common bases include lack of novelty (35 USC § 102), obviousness (35 USC § 103), failure to fully describe the invention (35 USC § 112), and unpatentable subject matter (35 USC § 101). An office action will state the basis for each rejection, and applicants must address each one in their response.

Cross-referenced

First-to-file

The rule, adopted in the U.S. by the America Invents Act, that when two people independently invent the same thing the patent goes to whoever filed first, not whoever invented first. It makes the filing date critical.

Cross-referenced

Inventor

The person (or persons) who conceived the claimed invention. Inventorship is a legal concept distinct from contribution to a project — someone who merely built what was designed, or who had a general idea that was made more specific by someone else, may not qualify as an inventor. Incorrectly listing inventors can invalidate a patent.

Cross-referenced

On-sale bar

A rule that you cannot patent an invention that was on sale, or offered for sale, more than one year before filing. Together with prior public use and publication it forms the statutory bar that can destroy novelty under 35 U.S.C. 102.

Cross-referenced

Prior art

All publicly available information that existed before a patent's priority date that is relevant to the novelty and non-obviousness of the claimed invention. Prior art includes earlier patents, published patent applications, journal articles, product manuals, conference presentations, and anything that was publicly known or in use. Searching prior art before filing is one of the most valuable steps an inventor can take.

Non-practicing entity (NPE)

A patent owner that does not make or sell products practicing its patents but earns money by licensing or asserting them. The pejorative term 'patent troll' refers to NPEs seen as using the high cost of litigation to extract settlements.