Before an inventor can apply for a patent, they must ensure that they meet the requirements set out by the patent laws of the United States. The process of obtaining a patent can be lengthy and expensive, so understanding the eligibility requirements can help inventors determine the best way forward.
Utility patents are the most common types of patent, and there are four main requirements for obtaining one: the invention must be statutory, new, non-obvious and useful. Outlined below is an in-depth look at each category.
The statutory requirement means that the invention in question is patentable. The Patent Act contains broad language that may make it appear that almost every type of invention imaginable would meet the requirements, and the U.S. is widely considered to have one of the broadest definitions of what defines a patentable subject matter in the world.
The four main categories of patentable items are:
- Articles of manufacture
- Compositions of matter
While most physical devices will meet this definition, there are a few types of inventions that are more likely to face challenges regarding their eligibility. These include software inventions and certain types of inventions that are related to medical tests and diagnostics.
Even if an invention meets the other patentability requirements, it will not be able to obtain a patent if it does not meet the subject matter eligibility test. However, a patent attorney may be able to help those with inventions that fall into a gray area to increase their chances of success.
Another major requirement for an invention to obtain a patent is that it is considered new or novel. If the invention was already known to the public before the inventor applied for patent protection, it was described in a printed publication or it was already described in a published patent application, a patent cannot be obtained.
If there was already another invention in existence before the date of the patent application, which incorporates the same elements as the invention in question, it will not be considered novel, nor will it be able to receive a patent.
However, there is an exception for disclosures that are made by the inventor within a period of less than a year prior to filing the patent application. Following the first public disclosure of an invention, there is a period of one year in which the inventor may file a patent application.
After this time, they will lose all rights to obtain patent protection for their invention. It is important to note that the year may begin tolling even after something seemingly unofficial, such as showing an invention to friends.
Despite the one-year grace period, patent attorneys advise filing a patent application prior to any public disclosure or announcement of an invention. Many other countries do not offer such a period, so it is preferable to file for a patent before public disclosure to avoid compromising one’s chances of obtaining an international patent.
For an invention to be granted a patent, it must represent a non-obvious improvement over previous products or processes. To make this determination, the person assessing the application must decide whether the invention is something that would have been obvious to a person who has ordinary skills in the industry or type of technology that the invention employs.
This is one of the more difficult areas of patent law to navigate. Patent office examiners typically review previous patents for the items closest to the invention. Should they find a single patent that contains all of the same features as the new invention, the patent will be rejected for lacking novelty.
However, if there is no patent with all of the features, the examiner must then try to combine several previous patents to see if they can find all of the features across a combination of these patents. If they do, the invention will be rejected on the grounds that it is an obvious combination of items that were known previously.
Another stipulation for an invention to obtain a patent is that it must be useful. Although this requirement is generally easy to meet when it comes to electronics and computer technology, patenting pharmaceutical or chemical compounds can be more difficult as the inventor must identify a specific or practical utility for new compounds. Note that it is necessary for the invention to be useful right now rather than having a theoretical utility in the future.
A useful invention will work the way in which the inventor claims it does, and it must be clear that it is useful for a specific purpose that can help the public immediately. Many patent attorneys will add a utility statement to a patent application to help the person assessing the application understand how the invention meets this requirement.
An invention may fail the utility requirement check if its utility is not obvious or its claims of usefulness are not credible, such as inventions that claim to carry out tasks that are impossible.
Request a Consultation with the Patent Attorneys at Metrolex IP
To learn more about patent eligibility or discuss your invention with patent attorneys, contact the Washington, D.C. intellectual property attorneys at Metrolex IP by calling (202) 979-9784 or schedule a consultation online today.