Point of novelty
Encyclopedia
Point of novelty is a term used in patent law to distinguish those elements or limitations in a patent claim
that are conventional or known from those elements or limitations that are not conventional or known. That part of the invention may also be termed its "point of departure from the prior art." The term is also applied to a patentability test--the point of novelty test--which determines patentability (usually, obviousness) by considering the point(s) of novelty after dissecting out the conventional part.
In a Jepson claim, the conventional parts of the claim elements are placed in a preamble, such as "In a grease gun comprising a cylinder enclosing a piston longitudinally movable in said cylinder, said cylinder having a nozzle at a distal end thereof," which is followed by a transitional phrase
such as "the improvement comprising," which is followed by a recitation of the element or elements constituting the point of novelty, such as "said nozzle having a fluted opening at a distal end thereof."
A conceptual problem may arise in applying the point of novelty method of analysis when the elements at the point of novelty cooperate or co-act with the conventional elements or part of them in a novel way. The novel co-action is properly considered part of the point of novelty of the invention and should therefore properly be recited after the transitional phrase.
The United States Court of Appeals for the Federal Circuit
formerly used the point of novelty test for design patents as the basis of a patent infringement analysis, but the court recently abandoned that test in Egyptian Goddess, Inc. v. Swisa, Inc. The Federal Circuit has at times criticized use of the point of novelty test in obviousness analysis, but the Supreme Court has continued to use a point of novelty test for obviousness. In Parker v. Flook
the Supreme Court analyzed patent-eligibility (statutory subject matter) under a point of novelty test, citing Neilson v. Harford and O’Reilly v. Morse
as authority, but in Diamond v. Diehr
, the Court used the opposite approach.
Claim (patent)
Patent claims are the part of a patent or patent application that defines the scope of protection granted by the patent. The claims define, in technical terms, the extent of the protection conferred by a patent, or the protection sought in a patent application...
that are conventional or known from those elements or limitations that are not conventional or known. That part of the invention may also be termed its "point of departure from the prior art." The term is also applied to a patentability test--the point of novelty test--which determines patentability (usually, obviousness) by considering the point(s) of novelty after dissecting out the conventional part.
In a Jepson claim, the conventional parts of the claim elements are placed in a preamble, such as "In a grease gun comprising a cylinder enclosing a piston longitudinally movable in said cylinder, said cylinder having a nozzle at a distal end thereof," which is followed by a transitional phrase
Transitional phrase
A transitional phrase, in United States patent law, is a phrase that links the preamble of a patent claim to the specific elements set forth in the claim which define what the invention itself actually is...
such as "the improvement comprising," which is followed by a recitation of the element or elements constituting the point of novelty, such as "said nozzle having a fluted opening at a distal end thereof."
A conceptual problem may arise in applying the point of novelty method of analysis when the elements at the point of novelty cooperate or co-act with the conventional elements or part of them in a novel way. The novel co-action is properly considered part of the point of novelty of the invention and should therefore properly be recited after the transitional phrase.
The United States Court of Appeals for the Federal Circuit
United States Court of Appeals for the Federal Circuit
-Vacancies and pending nominations:-List of former judges:-Chief judges:Notwithstanding the foregoing, when the court was initially created, Congress had to resolve which chief judge of the predecessor courts would become the first chief judge...
formerly used the point of novelty test for design patents as the basis of a patent infringement analysis, but the court recently abandoned that test in Egyptian Goddess, Inc. v. Swisa, Inc. The Federal Circuit has at times criticized use of the point of novelty test in obviousness analysis, but the Supreme Court has continued to use a point of novelty test for obviousness. In Parker v. Flook
Parker v. Flook
Parker v. Flook, was a 1978 United States Supreme Court decision that ruled that an invention that departs from the prior art only in its use of a mathematical algorithm is patent-eligible only if the implementation is novel and unobvious. The algorithm itself must be considered as if it were part...
the Supreme Court analyzed patent-eligibility (statutory subject matter) under a point of novelty test, citing Neilson v. Harford and O’Reilly v. Morse
O’Reilly v. Morse
O'Reilly v. Morse, also known as The Telegraph Patent Case, is an 1853 decision of the United States Supreme Court that has been highly influential in the development of the law of patent-eligibility in regard to claimed inventions in the field of computer-software related art...
as authority, but in Diamond v. Diehr
Diamond v. Diehr
Diamond v. Diehr, , was a 1981 U.S. Supreme Court decision which held that the execution of a physical process, controlled by running a computer program was patentable...
, the Court used the opposite approach.