# MPEP § 1504.02: Novelty

> Federal · Agency guidance · In force

URL: https://www.frixlaw.com/law-library/statutes/MPEP_S1504.02

## Section

- **Citation:** MPEP § 1504.02
- **Heading:** Novelty
- **Jurisdiction:** Federal
- **Kind:** Agency guidance
- **Status:** In force
- **Text as of:** August 14, 2026
- **Source:** Compiled text
- **Location:** USPTO MPEP / Chapter 1500 - Design Patents / MPEP § 1504.02

## Text

35 U.S.C. 102
Conditions for patentability; novelty.
(a) NOVELTY; PRIOR ART.—A person shall be entitled
to a patent unless—
(1) the claimed invention was patented,
described in a printed publication, or in public use, on sale, or
otherwise available to the public before the effective filing date of the
claimed invention; or
(2) the claimed invention was described in a
patent issued under
section 151
, or in an
application for patent published or deemed published under
section 122(b)
, in which the patent or
application, as the case may be, names another inventor and was
effectively filed before the effective filing date of the claimed
invention.
(b) EXCEPTIONS.—
(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE
THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.—A disclosure made 1
year or less before the effective filing date of a claimed invention
shall not be prior art to the claimed invention under subsection
(a)(1)
if—
(A) the disclosure was made by the
inventor or joint inventor or by another who obtained the subject
matter disclosed directly or indirectly from the inventor or a
joint inventor; or
(B) the subject matter disclosed had,
before such disclosure, been publicly disclosed by the inventor or
a joint inventor or another who obtained the subject matter
disclosed directly or indirectly from the inventor or a joint
inventor.
(2) DISCLOSURES APPEARING IN APPLICATIONS AND
PATENTS.—A disclosure shall not be prior art to a claimed invention under
subsection
(a)(2)
if—
(A) the subject matter disclosed was
obtained directly or indirectly from the inventor or a joint
inventor;
(B) the subject matter disclosed had,
before such subject matter was effectively filed under subsection
irectly from the inventor or a joint
inventor.
(2) DISCLOSURES APPEARING IN APPLICATIONS AND
PATENTS.—A disclosure shall not be prior art to a claimed invention under
subsection
(a)(2)
if—
(A) the subject matter disclosed was
obtained directly or indirectly from the inventor or a joint
inventor;
(B) the subject matter disclosed had,
before such subject matter was effectively filed under subsection
(a)(2)
, been
publicly disclosed by the inventor or a joint inventor or another
who obtained the subject matter disclosed directly or indirectly
from the inventor or a joint inventor; or
(C) the subject matter disclosed and
the claimed invention, not later than the effective filing date of
the claimed invention, were owned by the same person or subject to
an obligation of assignment to the same person.
(c) COMMON OWNERSHIP UNDER JOINT RESEARCH
AGREEMENTS.—Subject matter disclosed and a claimed invention shall be deemed to
have been owned by the same person or subject to an obligation of assignment to
the same person in applying the provisions of subsection
(b)(2)(C)
if—
(1) the subject matter disclosed was
developed and the claimed invention was made by, or on behalf of, 1 or
more parties to a joint research agreement that was in effect on or
before the effective filing date of the claimed invention;
(2) the claimed invention was made as a
result of activities undertaken within the scope of the joint research
agreement; and
(3) the application for patent for the
claimed invention discloses or is amended to disclose the names of the
parties to the joint research agreement.
(d) PATENTS AND PUBLISHED APPLICATIONS EFFECTIVE AS
PRIOR ART.—For purposes of determining whether a patent or application for
patent is prior art to a claimed invention under subsection
dertaken within the scope of the joint research
agreement; and
(3) the application for patent for the
claimed invention discloses or is amended to disclose the names of the
parties to the joint research agreement.
(d) PATENTS AND PUBLISHED APPLICATIONS EFFECTIVE AS
PRIOR ART.—For purposes of determining whether a patent or application for
patent is prior art to a claimed invention under subsection
(a)(2)
, such patent or application shall be considered
to have been effectively filed, with respect to any subject matter described in
the patent or application—
(1) if paragraph (2) does not apply, as of
the actual filing date of the patent or the application for patent; or
(2) if the patent or application for patent
is entitled to claim a right of priority under
section
119
,
365(a)
, or
365(b)
or to claim the benefit of an earlier
filing date under
section 120
,
121
, or
365(c)
, based upon 1
or more prior filed applications for patent, as of the filing date of the
earliest such application that describes the subject matter.
35 U.S.C. 102 (pre-AIA)
Conditions for patentability; novelty and loss of right to
patent.
A person shall be entitled to a patent unless —
(a) the invention was known or used by others in this country, or
patented or described in a printed publication in this or a foreign country,
before the invention thereof by the applicant for patent, or
(b) the invention was patented or described in a printed
publication in this or a foreign country or in public use or on sale in this
country, more than one year prior to the date of the application for patent in
the United States, or
(c) he has abandoned the invention, or
described in a printed publication in this or a foreign country,
before the invention thereof by the applicant for patent, or
(b) the invention was patented or described in a printed
publication in this or a foreign country or in public use or on sale in this
country, more than one year prior to the date of the application for patent in
the United States, or
(c) he has abandoned the invention, or
(d) the invention was first patented or caused to be patented, or
was the subject of an inventor’s certificate, by the applicant or his legal
representatives or assigns in a foreign country prior to the date of the
application for patent in this country on an application for patent or
inventor’s certificate filed more than twelve months before the filing of the
application in the United States, or
(e) the invention was described in — (1) an application for
patent, published under
section 122(b)
, by another
filed in the United States before the invention by the applicant for patent or
(2) a patent granted on an application for patent by another filed in the
United States before the invention by the applicant for patent, except that an
international application filed under the treaty defined in
section
351(a)
shall have the effects for the purposes of this
subsection of an application filed in the United States only if the
international application designated the United States and was published under
Article
21(2)
of such treaty in the English language; or
(f) he did not himself invent the subject matter sought to be
patented, or
nternational application filed under the treaty defined in
section
351(a)
shall have the effects for the purposes of this
subsection of an application filed in the United States only if the
international application designated the United States and was published under
Article
21(2)
of such treaty in the English language; or
(f) he did not himself invent the subject matter sought to be
patented, or
(g)(1) during the course of an interference conducted under
section
135
or
section 291
, another
inventor involved therein establishes, to the extent permitted in
section
104
, that before such person’s invention thereof the
invention was made by such other inventor and not abandoned, suppressed, or
concealed, or (2) before such person’s invention thereof, the invention was
made in this country by another inventor who had not abandoned, suppressed, or
concealed it. In determining priority of invention under this subsection, there
shall be considered not only the respective dates of conception and reduction
to practice of the invention, but also the reasonable diligence of one who was
first to conceive and last to reduce to practice, from a time prior to
conception by the other.
A claimed design may be rejected under
35 U.S.C.
102
when the invention is anticipated (or is “not novel”) over a
disclosure that is available as prior art. In design patent applications, the factual
inquiry in determining anticipation over a prior art reference is the same as in utility
patent applications. That is, the reference “‘must be identical in all material
respects.’”
Hupp v. Siroflex of America Inc.,
122 F.3d 1456, 43
USPQ2d 1887 (Fed. Cir. 1997). For anticipation to be found, the claimed design and the
prior art design must be substantially the same.
Door-Master Corp. v.
Yorktowne, Inc.,
256 F.3d 1308, 1313, 59 USPQ2d 1472, 1475 (Fed. Cir. 2001)
(citing
Gorham Mfg. Co. v. White,
81 U.S. 511, 528 (1871)).
In
International Seaway Trading Corp. v.
Walgreens Corp.,
589 F.3d 1233, 1239-40, 93 USPQ2d 1001, 1005 (Fed. Cir
d 1887 (Fed. Cir. 1997). For anticipation to be found, the claimed design and the
prior art design must be substantially the same.
Door-Master Corp. v.
Yorktowne, Inc.,
256 F.3d 1308, 1313, 59 USPQ2d 1472, 1475 (Fed. Cir. 2001)
(citing
Gorham Mfg. Co. v. White,
81 U.S. 511, 528 (1871)).
In
International Seaway Trading Corp. v.
Walgreens Corp.,
589 F.3d 1233, 1239-40, 93 USPQ2d 1001, 1005 (Fed. Cir.
2009), the Federal Circuit held that the ordinary observer test, the test used for
infringement, is “the sole test for anticipation.” Under the ordinary observer test,
“‘if, in the eye of an ordinary observer, giving such attention as a purchaser usually
gives, two designs are substantially the same, if the resemblance is such as to deceive
such an observer, inducing him to purchase one supposing it to be the other, the first
one patented is infringed by the other.’”
Gorham,
81 U.S. at 528. In
Egyptian Goddess,
an
en banc
panel of the
Federal Circuit "characteriz[ed] the ordinary observer as being ‘deemed to view the
differences between the patented design and the accused product in the context of the
prior art.’”
Seaway,
589 F.3d at 1239-40, 93 USPQ2d at 1005, quoting
Egyptian Goddess Inc. v. Swissa Inc.,
543 F.3d 665, 676, 88 USPQ2d
1658, 1666-67 (Fed. Cir. 2008)
(en banc)
. The court also explained
that “‘when the claimed design is close to the prior art designs, small differences
between the accused design and the claimed design are likely to be important to the eye
of the hypothetical ordinary observer.’”
Id.
The ordinary observer test requires consideration of the
design as a whole. See
Seaway,
589 F.3d at 1243, 93 USPQ2d at 1008;
Egyptian Goddess,
543 F.3d at 677, 88 USPQ2d 1667. In applying the
ordinary observer test, “determine whether ‘the deception that arises is a result of the
similarities in the overall design not of similarities in ornamental features in
isolation.’” See
Richardson v. Stanley Works Inc.,
597 F.3d 1288,
1295, 93 USPQ2d 1937, 1941 (Fed. Cir. 2010), citing
Amini Innovation Corp. v
, 93 USPQ2d at 1008;
Egyptian Goddess,
543 F.3d at 677, 88 USPQ2d 1667. In applying the
ordinary observer test, “determine whether ‘the deception that arises is a result of the
similarities in the overall design not of similarities in ornamental features in
isolation.’” See
Richardson v. Stanley Works Inc.,
597 F.3d 1288,
1295, 93 USPQ2d 1937, 1941 (Fed. Cir. 2010), citing
Amini Innovation Corp. v.
Anthony California Inc.,
439 F.3d 1365, 1371, 78 USPQ2d 1147, 1151 (Fed.
Cir. 2006) (holding that the overall infringement test is not to be converted to an
element-by-element comparison when factoring out the functional aspects of various
design elements). See
Apple Inc. v. Samsung Elecs. Co.,
786 F.3d 983,
998, 114 USPQ2d 1953, 1962 (Fed. Cir. 2015);
Ethicon Endo-Surgery, Inc. v.
Covidien, Inc.,
796 F.3d 1312, 1333, 115 USPQ2d 1880, 1896 (Fed. Cir.
2015); and
Sport Dimension, Inc. v. Coleman Co. Inc.,
820 F.3d, 1316,
1320-21, 118 USPQ2d 1607, 1609-10 (Fed. Cir. 2016). “The mandated overall comparison is
a comparison taking into account significant differences between the two designs, not
minor or trivial differences that necessarily exist between any two designs that are not
exact copies of one another.”
Seaway,
589 F.3d at 1243, 93 USPQ2d at
1008. “Just as minor differences between a patented design and an accused article's
design cannot, and shall not, prevent a finding of infringement, so too minor
differences cannot prevent a finding of anticipation.”
Id.
(internal
quotation marks omitted).
“A design claim is limited to the article of manufacture
identified in the claim; it does not broadly cover a design in the abstract.”
In re SurgiSil, L.L.P.,
14 F.4th 1380, 1382, 2021 USPQ2d 1008
(Fed. Cir. 2021). See also
MPEP § 1502
. In
SurgiSil,
the Federal Circuit reversed an anticipation rejection
of a lip implant over an art tool because it determined that the Board's anticipation
finding “rests on an erroneous interpretation of the claim's scope.”
Id
fied in the claim; it does not broadly cover a design in the abstract.”
In re SurgiSil, L.L.P.,
14 F.4th 1380, 1382, 2021 USPQ2d 1008
(Fed. Cir. 2021). See also
MPEP § 1502
. In
SurgiSil,
the Federal Circuit reversed an anticipation rejection
of a lip implant over an art tool because it determined that the Board's anticipation
finding “rests on an erroneous interpretation of the claim's scope.”
Id.
The court reasoned that where “[t]he claim language recites ‘a
lip implant,’” and “the application’s figure depicts a lip implant, … the claim is
limited to lip implants and does not cover other articles of manufacture.”
Id.
When a claim is rejected under
35 U.S.C. 102
as being unpatentable
over prior art, those features of the design which are functional and/or hidden during
end use may not be relied upon to support patentability. See
In re
Cornwall,
230 F.2d 457, 109 USPQ 57 (CCPA 1956);
Jones v. Progress
Ind., Inc.,
163 F. Supp. 824, 119 USPQ 92 (D. R.I. 1958). Further, in a
rejection of a claim under
35 U.S.C. 102
, mere differences in
functional considerations do not negate a finding of anticipation when determining
design patentability. See
Black & Decker, Inc. v. Pittway Corp.,
636 F.2d 1193, 231 USPQ 252 (N.D. Ill. 1986). See also
In re
Zonenstein,
172 F.2d 599, 80 USPQ 522, 523 (CCPA 1949) (“Patentability of a
design cannot be predicated on size or utility.”).
It is not necessary for the examiner to cite or apply prior art to show
that functional and/or hidden features are old in the art as long as the examiner has
properly relied on evidence to support the
prima facie
lack of
ornamentality of these individual features. If applicant wishes to rely on functional or
hidden features as a basis for patentability, the same standard for establishing
ornamentality under
35
U.S.C. 171
must be applied before these features can be given any
patentable weight. See
MPEP § 1504.01(c)
.
In evaluating a statutory bar based on
pre-AIA 35 U.S.C
vidence to support the
prima facie
lack of
ornamentality of these individual features. If applicant wishes to rely on functional or
hidden features as a basis for patentability, the same standard for establishing
ornamentality under
35
U.S.C. 171
must be applied before these features can be given any
patentable weight. See
MPEP § 1504.01(c)
.
In evaluating a statutory bar based on
pre-AIA 35 U.S.C.
102(b)
, the experimental use exception to a statutory bar for
public use or sale (see
MPEP § 2133.03(e)
) does not usually apply for design patents.
See
In re Mann,
861 F.2d 1581, 8 USPQ2d 2030 (Fed. Cir. 1988).
However,
Tone Brothers, Inc. v. Sysco Corp.,
28 F.3d 1192, 1200, 31
USPQ2d 1321, 1326 (Fed. Cir. 1994) held that “experimentation directed to functional
features of a product also containing an ornamental design may negate what otherwise
would be considered a public use within the meaning of section 102(b).” See
MPEP §
2133.03(e)(6)
.
Registration of a design abroad is considered to be equivalent to
patenting for priority purposes under
35 U.S.C. 119(a)
-
(d)
and for prior
art purposes
pre-AIA
35 U.S.C. 102(d)
, whether or not the foreign grant is published.
(See
Ex parte Lancaster,
151 USPQ 713 (Bd. App. 1965);
Ex
parte Marinissen,
155 USPQ 528 (Bd. App. 1966);
Appeal No. 239-48,
Decided April 30, 1965,
151 USPQ 711, (Bd. App. 1965);
Ex parte
Appeal decided September 3, 1968
, 866 O.G. 16 (Bd. App. 1966). The basis of
this practice is that if the foreign applicant has received the protection offered in
the foreign country, no matter what the protection is called (“patent,” “Design
Registration,” etc.), if the United States application is timely filed, a claim for
priority will vest. If, on the other hand, the U.S. application is not timely filed, a
statutory bar arises under
pre-AIA 35 U.S.C. 102(d)
as modified
by
35 U.S.C.
172
. In order for the filing to be timely for priority purposes
and to avoid possible statutory bars, the U.S
e protection is called (“patent,” “Design
Registration,” etc.), if the United States application is timely filed, a claim for
priority will vest. If, on the other hand, the U.S. application is not timely filed, a
statutory bar arises under
pre-AIA 35 U.S.C. 102(d)
as modified
by
35 U.S.C.
172
. In order for the filing to be timely for priority purposes
and to avoid possible statutory bars, the U.S. design patent application must be made
within 6 months of the foreign filing. See also
MPEP § 1504.10
.
The laws of each foreign country vary in one or more respects.
The following table sets forth the dates on which design rights can be
enforced in a foreign country (INID Code (24)) and thus, are also useable in a
pre-AIA 35 U.S.C.
102(d)
rejection as modified by
35 U.S.C. 172
. It
should be noted that in many countries the date of registration or grant is the filing
date.
Country or Organization
Date(s) Which Can Also Be Used for
35
U.S.C. 102(d)
Purposes
1
(INID Code (24))
Comment
AT-Austria
Protection starts on the date of
publication of the design in the official gazette
AU-Australia
Date of registration or grant which is the
filing date
BG-Bulgaria
Date of registration or grant which is the
filing date
BX-Benelux (Belgium, Luxembourg, and the
Netherlands)
Date on which corresponding application
became complete and regular according to the criteria set by the law
CA-Canada
Date of registration or grant
CH-Switzerland
Date of registration or grant which is the
filing date
Minimum requirements: deposit application,
object, and deposit fee
CL-Chile
Date of registration or grant
CU-Cuba
Date of registration or grant which is the
filing date
CZ-Czechia
Date of registration or grant which is the
filing date
DE-Germany
Date of registration or grant
The industrial design right can be enforced
by a court from the date of registration although it is in force earlier (as
from the date of filing—as defined by law)
on,
object, and deposit fee
CL-Chile
Date of registration or grant
CU-Cuba
Date of registration or grant which is the
filing date
CZ-Czechia
Date of registration or grant which is the
filing date
DE-Germany
Date of registration or grant
The industrial design right can be enforced
by a court from the date of registration although it is in force earlier (as
from the date of filing—as defined by law).
DK-Denmark
Date of registration or grant which is the
filing date
EG-Egypt
Date of registration or grant which is the
filing date
ES-Spain
Date of registration or grant
FI-Finland
Date of registration or grant which is the
filing date
FR-France
Date of registration or grant which is the
filing date
GB-United Kingdom
Date of registration or grant which is the
filing date
Protection arises automatically under the
Design Right provision when the design is created. Proof of the date of the
design creation needs to be kept in case the design right is challenged. The
protection available to designs can be enforced in the courts following the
date of grant of the Certificate of Registration as of the date of
registration which stems from the date of first filing of the design in the
UK or, if a priority is claimed under the Convention, as another country.
HU-Hungary
Date of registration or grant
With retroactive effect as from the filing
date
JP-Japan
Date of registration or grant
KR-Republic of Korea
Date of registration or grant
MA-Morocco
Date of registration or grant which is the
filing date
MC-Monaco
Date of registration or grant which is the
filing date
Date of prior disclosure declared on
deposit
NO-Norway
Date of registration or grant which is the
filing date
OA-African Intellectual Property
Organization (OAPI) (Benin, Burkina Faso, Cameroon, Central African
Republic, Chad, Congo, Cote d`Ivoire, Gabon, Guinea, Mali, Mauritania,
Niger, Senegal, and Togo)
Date of registration or grant which is the
filing date
PT-Portugal
Date of registration or grant
RO-Romania
Date of registration or grant which is the
filing date
RU-R
or grant which is the
filing date
OA-African Intellectual Property
Organization (OAPI) (Benin, Burkina Faso, Cameroon, Central African
Republic, Chad, Congo, Cote d`Ivoire, Gabon, Guinea, Mali, Mauritania,
Niger, Senegal, and Togo)
Date of registration or grant which is the
filing date
PT-Portugal
Date of registration or grant
RO-Romania
Date of registration or grant which is the
filing date
RU-Russian Federation
Date of registration or grant which is the
filing date
SE-Sweden
Date of registration or grant
TN-Tunisia
Date of registration or grant which is the
filing date
TT-Trinidad and Tobago
Date of registration or grant which is the
filing date
WO-World Intellectual Property Organization
(WIPO)
Subject to Rule 14.2 of the Regulations (on
defects), the International Bureau enters the international deposit in the
International Register on the date on which it has in its possession the
application together with the items required. Reproductions, samples, or
models pursuant to Rule 12, and the prescribed fees.
1
Based on information taken from the “Survey of
Filing Procedures and Filing Requirements, as well as of Examination Methods
and Publication Procedures, Relating to Industrial Designs” as adopted by
the PCIPI Executive Coordination Committee of the World Intellectual
Property Organization (WIPO) at its fifteenth session on November 25,
1994.
Rejections under
pre-AIA 35 U.S.C. 102(d)
as modified
by
35 U.S.C.
172
should only be made when the examiner knows that the
application for foreign registration/patent has actually issued before the U.S. filing
date based on an application filed more than six (6) months prior to filing the
application in the United States. If the grant of a registration/patent based on the
foreign application is not evident from the record of the U.S. application or from
information found within the preceding charts, then the statement below should be
included in the first action on the merits of the application:

## Nearby sections

- [MPEP § 1501 Statutes and Rules Applicable](https://www.frixlaw.com/law-library/statutes/MPEP_S1501.md)
- [MPEP § 1502 Definition of a Design](https://www.frixlaw.com/law-library/statutes/MPEP_S1502.md)
- [MPEP § 1502.01 Distinction Between Design and Utility Patents](https://www.frixlaw.com/law-library/statutes/MPEP_S1502.01.md)
- [MPEP § 1502.02 Design Patent Practitioner Bar](https://www.frixlaw.com/law-library/statutes/MPEP_S1502.02.md)
- [MPEP § 1503 Elements of a Design Patent Application Filed Under 35 U.S.C. chapter 16](https://www.frixlaw.com/law-library/statutes/MPEP_S1503.md)
- [MPEP § 1503.01 Specification](https://www.frixlaw.com/law-library/statutes/MPEP_S1503.01.md)
- [MPEP § 1503.02 Drawing](https://www.frixlaw.com/law-library/statutes/MPEP_S1503.02.md)
- [MPEP § 1504 Examination](https://www.frixlaw.com/law-library/statutes/MPEP_S1504.md)
- [MPEP § 1504.01 Statutory Subject Matter for Designs](https://www.frixlaw.com/law-library/statutes/MPEP_S1504.01.md)
- [MPEP § 1504.01(a) Computer-Generated Electronic Images](https://www.frixlaw.com/law-library/statutes/MPEP_S1504.01(a).md)
- [MPEP § 1504.01(b) Design Comprising Multiple Articles or Multiple Parts Embodied in a Single Article](https://www.frixlaw.com/law-library/statutes/MPEP_S1504.01(b).md)
- [MPEP § 1504.01(c) Lack of Ornamentality](https://www.frixlaw.com/law-library/statutes/MPEP_S1504.01(c).md)
- [MPEP § 1504.01(d) Simulation](https://www.frixlaw.com/law-library/statutes/MPEP_S1504.01(d).md)
- [MPEP § 1504.01(e) Offensive Subject Matter](https://www.frixlaw.com/law-library/statutes/MPEP_S1504.01(e).md)

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Source: Frix Law Library, https://www.frixlaw.com/law-library/statutes/MPEP_S1504.02. Check the current official text before relying on it. Not legal advice.