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Patents: Requirements

    The controlling federal patent statute is Title 35 of the U.S. Code which is located here. However, lay persons and attorneys alike can quickly get lost in the weeds in Title 35 because it is large, complex and the statute itself provides very little guidance. For example, the entire definitions section is here and as you can see from the sparseness of this section, it provides very little help. Most of the substance, at least from an introductory perspective, is located in Chapter 10 -- Patentability of Inventions. That is where this tutorial will focus.

    What can you patent?

    Patentable subject matter is defined in section 101 and the entire section is made up of one sentence that reads as follows:

    § 101. Inventions patentable

    Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

    Essentially this section leaves patentable subject matter almost entirely open to every kind of invention under the sun. Given its broad scope, millions of inventors have responded and patented almost everything imaginable (and some inventions that are hard to imagine). There are limits to what constitutes patentable subject matter (covered next), and the process itself is arduous and almost always very expensive, so obtaining a patent does have its "barriers to entry," but despite this fact, many have managed to cross this hurdle.

    But a warning is in order here. Crossing the finish (i.e. running the patent marathon) does not imply that wealth will follow. Monetizing a patent is quite a different and more significant hurdle. Of the many that manage to cross the first hurdle, those that capitalize on their invention in a significant way are few and far between (usually, although not always, it is big name corporations, or at a minimum, the "well connected" that accomplish this feat). There is the rule and then there is the reality. This process is not for the faint of heart or for the uninitiated.

    What are the requirements?

    In order to obtain a patent an invention must be new, useful and non-obvious. This is a trite little phrase because all the keywords in it are terms of art, supported not only by statutory language but by a significant body of case law. Section 102 (duplicated below in its entirety to illustrate a point), deals with the "new" or "novelty" requirement. It is one of those code sections that encompasses entire treatises and that patent attorneys take years to master. It is deceptively byzantine with both national and international patent law implications.

    § 102. 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

    (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; [1] 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.

    What does it mean? Exactly. A crude interpretation is that if a person (or legal entity) already invented the subject matter of your patent you are out of luck. Your invention is not new, and you can't patent it. This does not necessarily mean (in the U.S.) that someone already patented your invention. It simply means that your invention was "known to the public" before you "invented" it. It also means that if you (or someone else) published the invention more than one year before filing the application, then you cannot patent the invention (a U.S. grace period not supported by the rest of the world). The latter requirement is known as a "statutory bar" and is a hard rule, no exceptions. Furthermore, if your invention was used publicly, or offered for sale to the public more than one year prior to the filing date, you can't patent it. The exceptions here swallow the rule and then some. Almost every key phrase is a term of art that has been litigated.

    Section 102 does highlight the importance of the patent search process. Before a client spends an inordinate amount of time walking down this road, they are well advised to first make an initial assessment (by searching the prior art) to determine if the novelty requirement is met. This also applies (even more so) as to whether the non-obvious requirement (discussed next) is also met. Patent search itself is a complex process, usually done by patent attorneys or other search specialists that they employ. The USPTO provides a publicly searchable database which is a good place to start. The FAQ from the USPTO on how to search for patents is located here. However, unless you are an expert in your field and knowledgeable about patents, this preliminary effort is likely to be of little use, other than the possibility of finding a direct hit on your invention, in which case your search is over and you can save yourself the time and money required to proceed. Should you decide to proceed, our recommendation is that you pay for an extensive and professionally done search.

    What does it mean for an invention to be non-obvious?

    The obviousness requirement, from a statutory perspective, is addressed in section 103. We will refrain from providing the entire section and only highlight the introductory paragraph.

    § 103. Conditions for patentability; non-obvious subject matter

    (a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.

    In other words, despite the fact that the invention in question meets the "novelty" threshold (i.e. there is something "new" about it) it may still not be patentable because it is simply an "obvious" extension of what is contained in the prior art. Again, the same caveats apply to this section as apply to the others. Key phrases and words are all terms of art. For example, what does it mean for someone to have "ordinary skill in the art?" Courts generally weigh several factors but there are no "bright line" rules. The factors weighed often include the following: (1) educational requirements for those that work in the field; (2) types of "problems" faced by those that work in the field; and (3) the time interval between innovations in the field.

    The section 103 inquiry (i.e. on the part of the court) usually proceeds as follows: (1) determine the scope and content of the prior art; (2) determine the difference between the prior art and the claims at issue; and (3) determine what is meant by ordinary skill in the art. The test then is stated in these terms. If a person of ordinary skill could have developed the invention in question, then it is not patentable; otherwise (if all other requirements are met) it is.

    If patents were litigated all the time then the section 103 inquiry would be the equivalent of a full employment act for attorneys (mostly patent attorneys). The reality is that patents are not litigated that often, despite the impression provided vis-a-vis the popular press. Patent litigation is much to expensive to be high volume. This is one of the factors that contribute to the lack of monetization of patents by small inventors. Even if they manage to cross the patent prosecution hurdles (i.e. actually obtaining the patent via the USPTO) they lack the resources to enforce it in a court of law.

    What does it mean for an invention to be useful?

    The "useful" (see section 101 above) requirement is often not an issue (and often not litigated) because most inventions are useful for something. There is no high degree of usefulness that is required, as evidenced by the many sites on the web that contain lists of "crazy" inventions that have been patented. However, as in almost all concepts in the patent universe, this does not mean that "useful" is a non-existent requirement. It is often litigated with respect to chemical patents or in bio-genetic related patents. The inquiry into utility usually poses three distinct questions: (1) general utility (can the invention do anything?); (2) specific utility (does the invention solve the problem that it was intended to solve?); and (3) beneficial or moral utility (does the invention produce a social good?). An intermediate chemical or biological process that is not an end in itself may be subject to attack on the grounds of "usefulness." The fear is that granting a patent on such a process would have a "chilling effect" on further work in the field.

    What is not patentable?

 

    Things that exist in nature (i.e. purely in their natural state) are not patentable because it is axiomatic that man did not invent nature. But, man made micro organisms have been upheld as patentable. The obvious question is what about human cloning? This is contrary to public policy everywhere, for deep seated moral and ethical reasons, and because enough of us (thankfully) still believe there are "places" where man should not be free to go. In addition, pure abstractions (e.g. mathematical formulas) are not patentable because these are considered the equivalent of ideas, which are not patentable for common sense and public policy reasons. Other than these few restrictions, almost everything else is up for grabs.

     


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