Point of novelty

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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 novel, i.e. not conventional or known.[citation needed] That part of the invention may also be termed its "point of departure from the prior art."[citation needed] 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.[citation needed]

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."[citation needed]

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.[citation needed] 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.[citation needed]

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.[1] The Federal Circuit has at times criticized use of the point of novelty test in obviousness analysis,[2] but the Supreme Court has continued to use a point of novelty test for obviousness.[3] 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. Then in Mayo v. Prometheus and Alice v. CLS Bank the Supreme Court went back to the test of the Flook case.

Present-day American patent law still acknowledges that some parts of a patent claim may constitute "insignificant post-solution activity". This is regarded as a kind of "point of novelty" approach, disallowed under present (Federal Circuit) patent law. To combat infringement, truly "insignificant" elements are routinely kept out of patent claims.[4] The purpose of the patent-eligibility doctrine concerning insignificant post-solution activity, however, is that adding such limitations to a claim does not involve adding an "inventive concept" to the otherwise ineligible underlying idea.[5]

The "contribution approach" in European patent law is similar to the American "point of novelty" approach. It is supposed to be invalid, but it is still being applied under various guises in order to avoid counter-intuitive results.

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  1. ^ 543 F.3d 665 (Fed. Cir. 2008).
  2. ^ See In re Gulack, 703 F.2d 1381, 1385 n.8 (Fed. Cir. 1983) ("A printed matter rejection is based on case law antedating the 1952 patent act, employing a point of novelty approach. The 1952 act legislatively revised that approach through its requirement that the claim be viewed as a whole in determining obviousness. The CCPA has considered all of the limitations of the claims, including the printed matter limitations, in determining whether the invention would have been obvious.").
  3. ^ See Sakraida v. Ag Pro, Inc., 425 U.S. 273 (1976); Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969).
  4. ^ See generally the Wikipedia article Exhausted combination.
  5. ^ See generally Software patents under United States patent law.