In the last quarter’s article, we reviewed how to conduct a patentability search on an invention using a five-step strategy for conducting such a search. The output of the patentability search is a list of relevant prior art references for consideration relative to an invention. We now must make a comparison of the relevant prior art references from the patentability search to the features and functions of the invention to see if the invention is patentable over the references identified in the search. Prior to making such a comparison, we need an understanding of the requirements for patentability of an invention under US patent laws.
The four requirements for patentability of an invention are utility, patentable subject matter, novelty and non-obviousness. We now will review each of these requirements (see Figure 1).
Utility requirement
The utility requirement for patentability, codified under 35 U.S.C. § 101, requires that the invention must perform some beneficial function. It also is referred to as “industrial applicability” under European patent laws. There must be a minimal showing that the invention is capable of achieving a pragmatic or practical result that one skilled in the art would appreciate. This is a fairly easy threshold to satisfy via a three-prong test for determining whether an invention has a specific utility, a substantial utility and a credible utility. The invention also must perform as alleged or intended to satisfy the utility requirement.
Patentable utility does not require that the invention be an improvement over the prior art and is not a measurement of how useful the invention is or whether it is better than the prior art. In chemistry and biotechnology inventions, synthesis of new compounds without a knowledge of how they may be used to achieve any practical working result may result in a rejection for lack of utility. However, rarely do we receive a rejection of a patent application based on lack of utility, unless there is no explicit or implicit use of the invention. Overall, utility is the easiest of the four requirements for patentability to satisfy.
Subject matter requirement
The subject matter requirement for patentability, also codified under 35 U.S.C. § 101, requires that the invention fall into one of two appropriate categories for patentable inventions, products and methods. Sub-classes under products include machines, articles of manufacture and compositions of matter. With product inventions, we define them by structural elements or compositional components. Sub-classes under processes include methods of making something and methods of using something. With method inventions, we define them by a series of acts or steps performed to produce a given result.
Over the last 40 years, the courts have expanded on interpretation of statutory subject matter to areas going beyond the traditional sciences (e.g., method of executing a golf putt, a new teaching method, a new technique for psychological analysis). In fact, the US Supreme Court has said that “anything under the sun that is made by man” may be patentable, with certain exceptions. These exceptions include abstract ideas, laws of nature, scientific principles (e.g., E = mc**2) and things that violate such principles (e.g., perpetual motion machine). Even business methods may be patentable. Computer algorithms are per se unpatentable, unless embodied as part of a useful product (e.g., smartphone) or method (e.g., method for facilitating investment decisions). As long as the invention is directed to a product or method derived from human ingenuity and is not an abstract idea, it should satisfy the subject matter requirement for patentability.
Novelty requirement
The next and more difficult hurdle to satisfy for getting a patent is the novelty requirement, codified under 35 U.S.C. § 102. The invention has to be directed to something that is new. That is, it must be something that is not already publicly available, as for example, in a publication or in public use. An invention would not satisfy the novelty requirement if it is completely described in a publication (e.g., patent, journal article, newspaper, online forum or magazine) that published prior to the filing date of the invention for patenting.
The novelty requirement also relates to time limits for filing a patent application and things that an inventor can do to defeat his/her right to apply for a patent. In particular, a patent application on the invention must be filed within one year after the invention is first: a) described in any publication anywhere, b) sold or offered for sale anywhere and c) publicly used or disclosed anywhere. This is referred to as a one-year grace period under US patent laws. If the inventor does not file a patent application within one year of either a), b) or c) occurring, he/she would be barred from applying for a patent.
When a patent examiner is reviewing a patent application to see if it satisfies the novelty requirement, he/she is trying to find a single prior art publication that teaches or suggests all of the features of the invention described in the claims of the patent application. If the patent examiner is unable to find one or more prior art references that teach or suggest all of the features of the invention, then the novelty requirement is satisfied.
Non-obviousness requirement
The fourth and most difficult hurdle to satisfy for getting a patent is the non-obviousness requirement, codified under 35 U.S.C. § 103. This requirement is where many patent applications “die” because of not being able to satisfy it. In the next quarter’s article, we will cover the non-obviousness requirement for patentability in great detail because of its importance in trying to turn a patent application into a granted patent.
Robert A. Migliorini
203-200-8065; rampatlaw@gmail.com
Patent Attorney