UNDERSTANDING PATENT NOVELTY AND INFRINGEMENT THROUGH THE LIGHT BULB EXAMPLE
Patents are a cornerstone of innovation, offering inventors exclusive rights to their creations. They serve not only as protection against infringers but as incentives for progress by ensuring that inventors can benefit from their inventions. However, two key aspects of patent law – novelty and infringement – are often misunderstood, leading to confusion. To clarify these key concepts, this article will explore the concepts of novelty and infringement and illustrate their differences using the well-known example of the electric light bulb.
What is patent novelty?
Novelty is a fundamental requirement for obtaining a patent. For an invention to be considered novel, it must be entirely new. This means that it cannot have been disclosed, described, or made publicly available in any form before a patent application for the invention has been filed. Novelty does not necessarily require an invention to be groundbreaking or revolutionary – sometimes even a small improvement can meet the novelty requirement if an identical invention does not exist.
Light bulb example:
Thomas Edison’s original light bulb:
When Thomas Edison filed a patent application for his electric light bulb, he claimed it as an “Electric lamp for giving light by incandescence, consisting of a filament of carbon of high resistance, made as described, and secured to metallic wires, as set forth.” At the time, no similar invention had been disclosed to the public. This made Edison’s light bulb novel – it introduced a groundbreaking concept of generating light through the incandescence of a carbon filament, which was not known or available to the public before his application.
Improved light bulb:
Now, imagine a scenario where, years after Edison’s breakthrough, an inventor named Ms. Polisher discovered that coiling the carbon filament would significantly improve the light bulb’s efficiency and lifespan. In other words, Ms. Polisher devised an “Electric lamp for giving light by incandescence, consisting of a coiled filament of carbon of high resistance, made as described, and secured to metallic wires, as set forth.” This invention is novel because, for the sake of this example, Edison’s original patent did not disclose the use of a coiled filament. Ms. Polisher’s improvement introduces a new feature to the light bulb, making her invention novel even though it builds on Edison’s concept.
What is patent infringement?
While novelty focuses on whether an invention is new, infringement deals with the use of a patented invention without permission. Patent infringement occurs when someone makes, uses, sells, or imports a patented invention without the patent holder’s consent. To determine whether infringement has occurred, the claims of the patent – precisely worded statements that describe the invention’s essential elements – are compared to a subsequent product or process. If the subsequent product or process contains all the essential elements described in the patent claims, it constitutes infringement, even if the subsequent product or process contain additional features or improvements.
Light bulb example:
Improved light bulb and potential infringement of Thomas Edison’s original light bulb patent:
Once Edison secured his patent, he had the exclusive right to prevent others from making, using, selling, or importing an electric light bulb that contained all the essential elements defined in his patent claim. In other words, if someone else were to make or sell an electric light bulb that used a carbon filament secured to metallic wires, as Edison claimed in his patent, without his permission, they would infringe on Edison’s patent, regardless of any modifications or improvements.
Even though Ms. Polisher’s electric light bulb is novel due to the coiled filament, it still contains all the essential elements of Edison’s original patent claim. To elaborate, Ms. Polisher’s improved electric light bulb:
(i) is also an “electric light bulb for giving light by incandescence”;
(ii) it includes a “filament of carbon of high resistance”, even though it is coiled; and
(iii) its coiled filament of carbon of high resistance is “secured to metallic wires.”
Since all the essential elements are present in Ms. Polisher’s electric light bulb, it would infringe on Edison’s patent, despite the addition of the coiled filament. In this case, she would need a licence from Edison before she could make, use, sell, or import her electric light bulb in territories where Edison secured a patent. This example underscores an important aspect of patent law: a novel invention can still infringe on an existing patent if it incorporates all the essential elements of that patent’s claims.
Final thoughts:
Understanding the distinction between patent novelty and infringement is critical for inventors, entrepreneurs, start-ups, and businesses navigating the complex world of intellectual property. Novelty pertains to whether an invention is new to qualify for patent protection, while infringement is concerned with whether an existing patent is being violated.
It is a common misconception that making minor improvements or alterations to a patented invention automatically avoids infringement. As the light bulb example demonstrates, infringement can still occur even if an invention is novel. If the improved invention incorporates all the key elements of the original patent, permission from the patent holder is necessary.
Patents are complex legal documents, and assessing whether an invention is novel or infringes on an existing patent requires careful examination of both the technical aspects of the invention and the language of the patent claims. Inventors should always seek professional guidance to ensure they avoid costly legal battles and successfully protect their innovations. Understanding the boundaries of patent protection is vital for fostering continued innovation while respecting the rights of previous inventors.
