When is an Invention Patentable?
Obtaining patent protection can greatly enhance the potential value of an invention. However, before going to the trouble of filing a patent application, how do you know if an invention is patentable in the first place? Under United States patent law, there are many requirements for patentability, including, fundamentally, that the invention must be something new. Here, we will briefly address these requirements, along with some final advice for weeding out unpatentable inventions before committing to preparing and filing a patent application.
To be patentable, an invention must meet many requirements. The foremost of these is that the invention must be something new, i.e., it must be "novel." If the invention is not new, or only differs in obvious ways from what has been done before, it cannot be patented. In addition, there are other miscellaneous requirements (e.g., the invention must be useful), as well as certain deadlines for filing patent applications, as set by law.
At the outset, before even considering whether an invention is actually new or not, there are several miscellaneous or threshold requirements that must be met for an invention to be patentable. These include: (i) originality; (ii) enablement; (iii) statutory subject matter; and (iv) utility.
The first of these, "originality," simply means that the invention must have originated with the person claiming to be the inventor, or, in the case of multiple co-inventors, that each person contributed something of significance to the invention. Put another way, patent law prevents someone from successfully patenting another's invention.
The second requirement, "enablement," means that the inventor has to be able to tell someone how to actually make and use the invention. It is not enough to merely have a good idea without any idea about how to implement it. For example, a machine which teleports objects from one location to another is a great idea, but unless the inventor has figured out how to make such a device work, it is not patentable.
Thirdly, for an invention to qualify for patent protection, it must have "utility," i.e., it must be useful. Since most inventions are inherently useful, or can be characterized as being useful for one purpose or another, this requirement is generally met, and rarely comes up in practice. An example of a non-useful invention would be a new chemical compound whose purpose, if any, has not yet been determined.
Finally, some inventions fall into categories that the federal courts have decided should not be patented, i.e., they are not "statutory subject matter." These categories include abstract mathematical algorithms, laws of nature, and naturally-occurring plants and minerals. However, patent protection can be obtained for just about everything else.
Other hurdles that must be crossed before addressing the issue of whether or not the invention is new are the so-called "statutory bars." These are provisions under United States patent law which impose certain time limits for filing patent applications. If these time limits are not met, the invention may be unpatentable.
To elaborate, Congress recently overhauled the patent laws by passing the Leahy-Smith America Invents Act ("AIA"). The greatest change under the AIA starts in March 2013. That is when the United States shifts from a first-to-invent to a first-to-file system. Only the first person to file a patent application can receive a patent. There is one exception. Basically, if a prior inventor (or Company) publicly disclosed the invention beforehand and filed a patent application within 12 months after that disclosure, this prior inventor should prevail.
U.S. patent law (specifically, 35 U.S.C. § 102(b)) previously provided a one-year grace period for an inventor to keep an invention totally secret before deciding to file a U.S. patent application. That is no longer the case. Someone else – a "junior" inventor – can beat the earlier inventor to the U.S. Patent and Trademark Office (the "Patent Office"); and the earlier inventor cannot later prevail. See New Patent Reform Act.
In most foreign countries, a patent application must be filed before selling or publicly disclosing an invention. This "absolute novelty" requirement encourages early filing and prevents inventors from extending the period of potential and actual patent protection.
Accordingly, it is of vital importance to keep track of how and when an invention is being publicly displayed, used by someone else, or sold, and to file a patent application before any statutory deadlines.
It is a good idea to at least consider filing a U.S. patent application before publicly disclosing or commercializing an invention. That way, the option to file patent applications in foreign countries is not unwittingly lost. Because of various treaties and other agreements, filing an application in the United States preserves the right to file corresponding foreign patent applications within a year of filing the U.S. application, even if the invention is disclosed or sold during that period, i.e., after filing in the U.S. but before filing in foreign countries.
There are other statutory bars under U.S. law, but these do not come up that often and will not be addressed here. However, a registered patent attorney should be consulted as soon as possible during the invention process, to make sure no such bars are applicable.
Novelty and Non-Obviousness
If there are not any problems with the threshold requirements or statutory bars, the final requirement for patentability is that the invention be something "new." To cross this hurdle, the invention must be both "novel" and "non-obvious," as the issue is characterized under U.S. law. Although novelty and obviousness are related, the former asks if the invention is different from what has been done before, while the latter looks at the character of the differences.
To elaborate, if an invention turns out to be exactly the same as a prior invention, as publicly known and/or shown in a patent or other document, it is not new, and cannot be patented. On the other hand, if there are differences between the invention and the most similar prior invention(s), those differences can be relied upon to obtain patent protection, provided the differences would not have been obvious to someone with "ordinary skill in the art," i.e., someone familiar with the particular technological field to which the invention relates. Thus, if the only difference between an invention and what has been done before is a change in size or scale, the addition of "bells and whistles" or replacing one component with another of similar function, the invention will probably not be patentable. For example, replacing the stock chrome handlebar on a mountain bike with a carbon-composite handlebar would be an obvious, and hence unpatentable, modification.
Where Do I Go From Here?
To file a patent application, it is technically not necessary to first figure out if the underlying invention is patentable - instead, one can simply file the application at the Patent Office, whose job it is to make an independent determination of patentability. However, it makes a lot more sense to find out if a patent is likely before committing to the expense and effort of preparing and filing a patent application.
To do so, it is first recommended to look through some free, publicly-available sources of published and/or patented inventions, to get a preliminary idea of whether or not an invention is patentable. Such sources include technical journals and write-ups available at public libraries and on the Internet, and the national Patent and Trademark Depository Libraries ("PTDL"). Local PTDL's can be found at the Hartford Public Library in Northern Connecticut (CT), the Physical Sciences Library at UMass Amherst (convenient to Springfield, Longmeadow, and the rest of Western Massachusetts), and the Boston Public Library, also in Massachusetts (MA).
There are several free Internet-based patent databases, including the U.S. Patent Office's search website at http://patft.uspto.gov and the European Patent Office's search site at http://worldwide.espacenet.com/quickSearch?locale=en_EP.
Google® Patents (http://www.google.com/advanced_patent_search) is a good resource for conducting an informal search of U.S. patents.
For searching the online databases, it is typically best to first select several keywords that describe the invention. Then, take two or three of the keywords and plug them into the proper search format for the particular database. If this produces too many "hits" (results), the search can be narrowed by adding further keywords.
Here's an example of a search using the U.S. Patent Office's site:
My invention is a device for roasting bell peppers, tomatoes, and chili peppers in a microwave oven. The keywords I select are "microwave," "pepper," "roast," and "brown" (as in "browning" something in the oven). I go to http://patft.uspto.gov and select the "Advanced Search" button, which leads to http://patft.uspto.gov/netahtml/PTO/search-adv.htm.
In the "Query" box, I type: ABST/(microwave and (brown or roast or pepper)), and then click on the "Search" button. This looks for any patents whose abstract section (abst/) contains the words "microwave" and any of "brown," "roast," or "pepper" (the abstract section is a short description of the invention contained in a patent).
This produces 61 hits (patents), which I can then look through to see if any are similar to my invention.
Further instructions for searching these electronic databases can be found on the particular websites.
After this, the next step is to consult with your registered patent attorney. If the results of the preliminary research appear unfavorable, they can verify that patent protection is precluded. If the results of the research appear favorable, they can help determine if the other requirements for patentability are met, e.g., the threshold requirements and statutory bars, and recommend the next steps for proceeding. These might include: (i) one or more formal, professionally-conducted patent searches, to get a more thorough, definite idea of patentability; (ii) preparing and filing foreign patent applications, such as a Patent Cooperation Treaty (PCT) application or a European patent application filed with the European Patent Office (EPO); and/or (iii) one or more U.S. provisional patent applications or regular patent applications (also called "non-provisional patent applications"). Regarding the former, a provisional patent application has few formal requirements and costs less to prepare and file, but does not mature into a patent. Rather, it gives one year to see how an invention fares in the marketplace before having to file a regular patent application, which can eventually mature into a patent, but has more formal requirements and is more costly to prepare and file.
For more information about the patenting process, please contact the patent lawyers at Holland and Bonzagni.