Читать книгу Intellectual Property Law for Engineers, Scientists, and Entrepreneurs - Howard B. Rockman - Страница 118

The inventor next describes his or her understanding of what is believed to be novel about the invention for which a patent is being sought. There may be one or more points of novelty. Remember, no patentability search has yet been conducted to determine what actually may be novel about the invention, so the only reference point at this meeting is the inventor’s knowledge.

Although the inventor will explain what he/she believes the novelty to be, it is always prudent to conduct a patentability search of prior art patents and literature to determine more precisely what the point of novelty is, and upon what features of the invention it can be expected that valid patent claims can be obtained. This patentability search, and indeed the examination process itself, may indicate to the inventor that his or her initial thoughts regarding novelty were not exactly correct, but that other novel features do reside in the invention for which patentability can be claimed. This process is known as “shifting the point of novelty,” and is quite common in the prosecution and development of patents.

To prepare a patent application that will support all points of novelty, all of the structure, operation, and advantages of the invention, as well as the results of the invention, should be clearly disclosed to the patent professional by the inventor. Thus, the patent application will be drafted with all necessary elements included, so that, if the point of novelty shifts during the examination process, the new novel elements relied upon will be included in the application. Thus, it is important to present a full disclosure of the invention to the patent professional. Once a patent application is filed, no new matter can be added to the application.