Novelty and Non-Obviousness in Patent Protection

When it comes to obtaining a patent, two of the most important criteria that an invention must meet are novelty and non-obviousness. These two concepts are key to determining whether an invention is truly worthy of patent protection.

Novelty refers to the idea that an invention must be new and not already known or used by others. In other words, the invention must not have been publicly disclosed or made available for sale before the date of the patent application. This requirement is essential to the patent system, as it ensures that inventors are not granted exclusive rights to ideas or products that are already in the public domain.

Non-obviousness, on the other hand, means that the invention must not be an obvious improvement over existing technology or products. In order to be granted a patent, an invention must involve some degree of inventiveness or creativity, beyond what would be obvious to someone with ordinary skill in the relevant field.

Together, novelty and non-obviousness ensure that patents are only granted to truly innovative ideas that represent a significant advance over what already exists in the marketplace. This helps to promote competition, encourage new research and development, and ultimately benefit consumers by ensuring that they have access to new and improved products and technologies.

The Role of Intellectual Property and Patents in Creating Monopolies

Most people and Institutions have used patents to obtain monopoly rights in some certain inventions. The issue of allowing an individual to have an exclusive monopoly right over an invention receives criticism as well as vindication from different quarters of society.

Intellectual property, including patents, can play a role in creating monopolies in various industries. Patents give inventors the right to exclude others from making, using, or selling their invention for a certain period of time, typically 20 years from the date of filing. While the intention of patents is to promote innovation by protecting inventors’ ideas, they can also create barriers to entry for competitors and limit consumer choice.

In industries where patent protection is particularly strong, companies with patents can enjoy significant market power. This is because they can control the production and sale of a product or technology without competition, allowing them to charge higher prices or limit availability to consumers. Additionally, companies with patents can use their intellectual property to negotiate favorable terms with other companies, such as licensing agreements or cross-licensing deals, further solidifying their position in the market.

Critics argue that patent protection can be abused to create monopolies that limit competition and harm consumers. For example, pharmaceutical companies have been criticized for obtaining patents on minor variations of existing drugs, known as “evergreening,” in order to maintain a monopoly on the market and prevent generic competition. This can lead to high drug prices and limited access to important medications for consumers.

However, it’s important to note that the patent system is designed to balance the needs of inventors with the interests of society as a whole. Patents can promote innovation by incentivizing inventors to develop new and useful technologies, which can ultimately benefit consumers by improving products and services. Additionally, patents expire after a certain period of time, allowing other companies to enter the market and compete with the patent holder once the patent protection expires.

Why Should Inventions be Protected?

The significance of granting monopoly rights for new inventions have been recognized for a long time in the United States. This has been the case since the adoption of the constitution.

The main objectives of patent policies are to promote innovation by encouraging the spirit of inquiry so as to discover new ideas. They are aimed at ensuring that the innovative population is adequately recognized by the state as well as the international community through their intangible benefits.

A patentable invention must meet some basic minimum requirements of which novelty and non-obviousness are the most important.

Conditions for Patentability


Non-obviousness is one of the preconditions for patentability. A new invention must have adequate differences that can sufficiently distinguish it from what has been used or described by another person in the same field of study.

If the differences are obvious so that the distinctions are considered common knowledge to a person with reasonable skills in the filed then the invention cannot be patented. Accordingly, the claimed invention as a whole must not have been obvious, premising on a prior art, before the effective filing date of the claimed invention.

According to the U.S Supreme Court, the scope and content of prior art are necessary to determine the non-obviousness of a claimed invention (Graham v. John Deere Co., 1966). The case involved a claim of patent infringement, which consisted of comprised of old mechanical elements for an invention meant to absorb shock from plow to minimize damage to the plow when working in a rocky area. Whereas the Fifth Circuit was of the opinion that there was a patentable right because of the improvements that result in efficiency and cost effectiveness, the Eight Circuit held that the patent was invalid because there was no new outcome in the new combinations.

The decision was made in accordance with the constitutional requirements of non-obviousness. Issuance of new patents that have the potential of removing existing knowledge or limiting access to the materials already available in the public domain should not be allowed. A patentable innovation must seek to promote creativity and research.

The case of United States v. Adams (1966) closely compares with the above-discussed authority in Graham v. John Deere Co. (1966). The former case establishes that there can be non-obviousness even when obvious elements are combined to produce a new invention. The court was of the opinion that despite the fact that each and every element in Adam’s battery was obvious, basing on the fact that they were present in a prior art, obvious disadvantages in the prior invention, which are likely to discourage creativity should be considered when determining obviousness.

To a greater extent, the two decisions indicate how patent law is designed to promote its end, which is to encourage innovativeness and creativity in the society. Granting patent rights to an already existing element will mean that the applicant will limit access of the people to a material that was already at their disposal. Such a limitation will not be of any benefit to the society owing to the fact that patent rights are to some extent aimed at benefiting the society by encouraging creativity.

However, if there are some manifest distinctions between the new invention and a prior art then the new invention should be patented so as to enable the society benefit from the efficiency and usefulness of the new discovery. This was the case in United States v. Adams (1966).

The Novelty Test

The test for novelty inquires on a simple question: Is the claimed invention new? (Kitch, 1966). If the inquiry is answered affirmatively then the invention is patentable. The rationale for this is to the effect that the inventor has given the society something that it did not have before. Premising on this, it is only just and reasonable that the inventor isgiven exclusive monopoly right to the commercial development of such an invention.

In the case of Thomson v. S.A.V. Quixote Corp. (1999), the court noted that corroborative evidence balances the interests of the person applying for the patent protection of the interests of the inventor giving testimony. The court went further to assert that corroboration of an inventor’s testimony was of no importance unless the inventor or his/her assignee is one of the parties named, who is asserting priority. Additionally, the inventor must stand to make substantial gain should a finding of priority be reached in the patent claims.

The rationale behind this holding is that an inventor, who chose not to apply for a patent, should not be liable for infringing another’s patent on an invention that resembles his in form and substance because the society benefits from the invention. Additionally, such an invention is not suppressed, concealed, or abandoned.

The decision in Thomson v. S.A.V. Quixote Corp. (1999) has helped me understand that despite the fact that one has not applied for patent protection of his invention, the first-inventor-to-file provisions will not necessarily override his/her first-to-invent rights. This is possible if the first inventor was actively using his invention without concealment or abandonment.

Additionally, the first inventor might have used his invention in a manner that precludes the later inventor from patent filing. The first inventor might make a disclosure that is likely to prevent a later inventor from filing an application at a later stage.

Re Hilmer (1966) is a locus classicus case regarding foreign filing date in the United States. In this case, Hilmer filed for a German patent before Habicht filled his in Switzerland. Hilmer later filed for a US patent, on the same invention, before Habicht did. In his argument, Hilmer contended that because he was the first to file for the patent in the US, the filling amounted to the prior art and as such Habicht’s claim ought to be defeated because there was prior art before his filing.

Habicht succeeded by arguing that his foreign (Swiss) filing date, which was later to Hilmer’s foreign (German) filing but earlier that his US filing should be considered as his US filing date. Basically, the court set a precedent to the effect that a US patent application date is not a prior art reference date that should be used for the purposes of defeating another patent application but rather for obtaining a US patent. The case is a big limitation on how foreign patent applications can be used considering that most applicants have already filled in their home countries before seeking to file in the US.

Concisely, unlike a local filing date, foreign filing date cannot be used as a foreign application prior date for the purposes of deciding the patentability of later inventions by others. additionally, an innovation that has been made outside the United States cannot be considered as prior art to defeat patent rights as stipulated under section 102(g)(2) of the US Patent Act.

This case has helped me understand how the United States relates to foreign investors. The case lays down important principles that enable the country to protect foreigners from different states who wishes to file for US patents to protect a similar invention.


Despite the many challenges and controversies around the current legal principles on patent protection, the law has been successful in promoting innovation and encouraging creativity. The law has encouraged innovation by granting exclusive monopoly rights to those people who come up with unique and non-obvious inventions. Such people can have exclusive rights to use their inventions for commercial purposes. Additionally, the law has been successful in promoting creativity by allowing patent rights only for those inventions that are non-obvious and noble.

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