Patent Novelty and Non-Obviousness Check

Patent Novelty and Non-Obviousness Check

Assess patentability of: $ARGUMENTS

Adapted from /novelty-check for patent legal standards. Research novelty is NOT the same as patent novelty.

Constants

• REVIEWER_MODEL = gpt-5.5 — Model used via Codex MCP for cross-model examiner verification
• NOVELTY_STANDARD = patent — Always use legal patentability standard, not research contribution standard

Inputs

1. Invention description from $ARGUMENTS
2. patent/PRIOR_ART_REPORT.md (output of /prior-art-search)
3. patent/INVENTION_BRIEF.md if exists

Shared References

Load ../shared-references/patent-writing-principles.md for novelty/non-obviousness standards. Load ../shared-references/patent-format-us.md for 102/103 analysis framework.

Workflow

Step 1: Define Claim Elements

From the invention description, extract the key claim elements that would define the invention's scope:

1. List the technical features that make the invention novel
2. Identify which features are known from prior art vs. inventive
3. Draft preliminary claim language for 2-3 independent claims (method + system)

Step 2: Anticipation Analysis (Novelty)

For each preliminary claim, test against EACH prior art reference in PRIOR_ART_REPORT.md:

Single-reference test: Does any single reference disclose ALL claim elements?

Verdict per reference:

• ANTICIPATED: One reference discloses every element → claim is not novel
• NOT ANTICIPATED: At least one element missing from every single reference → claim is novel

Step 3: Obviousness Analysis (Inventive Step)

If the invention is novel (passes Step 2), test for obviousness:

Two/three-reference combination test: Can 2-3 references be combined to render the claim obvious?

For each combination of the top references:

1. Primary reference: Which reference is closest to the claimed invention?
2. Secondary reference(s): Which reference(s) teach the missing element(s)?
3. Motivation to combine: Would a POSITA have reason to combine these references?
   • Explicit suggestion in the references themselves?
   • Same field, same problem?
   • Common design incentive?
   • Known technique for improving similar devices?

Format as a matrix:

Step 4: Cross-Model Examiner Verification

Call REVIEWER_MODEL via a dedicated Codex reviewer agent at xhigh reasoning:

spawn_agent:
  model: gpt-5.5
  reasoning_effort: xhigh
  message: |
    You are a senior patent examiner at the [USPTO/CNIPA/EPO].
    Examine the following invention for patentability.

    INVENTION: [invention description + preliminary claims]

    PRIOR ART: [prior art references with key teachings]

    Please analyze:
    1. Anticipation (novelty): Does any single reference anticipate any claim?
    2. Obviousness: Can any combination of references render claims obvious?
    3. Claim scope: Are the claims broad enough to be valuable?
    4. Recommended amendments if any claim is rejected.
    Be rigorous and cite specific references.

Step 5: Jurisdiction-Specific Assessment

For each target jurisdiction, provide a patentability assessment:

Under 35 USC 102/103 (US):

• Novelty: PASS / FAIL (cite specific reference if fail)
• Non-obviousness: PASS / FAIL (cite combination if fail)

Under Article 22 CN Patent Law (CN):

• 新颖性 (Novelty): 通过 / 未通过
• 创造性 (Inventive Step): 通过 / 未通过

Under Article 54/56 EPC (EP):

• Novelty: PASS / FAIL
• Inventive step: PASS / FAIL (problem-solution approach)

Step 6: Output

Write patent/NOVELTY_ASSESSMENT.md:

## Patentability Assessment

### Invention Summary
[description]

### Overall Assessment
[PATENTABLE / PATENTABLE WITH AMENDMENTS / NOT PATENTABLE]

### Anticipation Analysis
[claim-by-claim matrix against each reference]

### Obviousness Analysis
[combination analysis with motivation to combine]

### Cross-Model Examiner Review
[summary of GPT-5.4 examiner feedback]

### Recommended Claim Amendments
[If claims need modification to overcome prior art, suggest specific amendments]

### Risk Factors
[What could cause rejection during actual prosecution?]

Key Rules

• Patent novelty is absolute: any public disclosure before the priority date counts as prior art, worldwide.
• Research novelty ("has anyone published this?") is NOT the same as patent novelty ("does any single reference teach every claim element?").
• Obviousness requires BOTH: (1) a combination of references AND (2) a motivation to combine them.
• Never assume the invention is patentable just because no identical patent exists.
• The assessment is advisory only -- actual prosecution may reveal different prior art.
• If reviewer delegation is unavailable in the current Codex host, stop and ask the user to enable Codex agent support before continuing.