Is My Invention Pantable?

In virtually all cases, there are three main requirements to determine whether an invention is patentable. The three requirements are:

• • Utility – Utility means that the invention has usefulness.  If the invention is not useful, it cannot be patented.  Patent Attorney Matthew Sean Tucker has previously discussed in a blog post what it means for an invention to be useful.  For example, an invention used only for illegal purposes lacks utility.  Inventions are not useful for their intended purpose if their only purpose is illegal, immoral, inoperable, have only aesthetic purposes, thoeretical phenomena, invovle nuclear weapons, avoid paying taxes, or is a human organism.
  • Novelty – Novelty takes a look at what existed prior to the invention and determines whether an identical invention existed.  A slight variation or distinction, no matter how small, will satisfy the novelty requirement.  Differences in structure, processes, and the like are looked at to determine novelty.  New combinations also satisfy the novelty requirements, so long as it has never been combined in that way before.  New uses is another way to satisfy the novelty requirement.  Additionally, inventions lose their novelty in the U.S. after you have placed it into the stream of commerce, or even offered it for sale, within one year thereof.
  • Nonobviousness – The nonbviousness looks at whether it would have been obvious to arrive at the present invention based on prior inventions to one of ordinary skill in the art.  Registered Patent Attorney Matthew Sean Tucker has encountered instances where the invention would have been obvious in one field of art, but not in another.  For example, what is obvious to a neurosurgeon may not be obvious to a school teacher, and vice-versa.  Because obviousness is a legal term of art, the meaning is not simply the definition you may expect.  Accordingly, it is always best to discuss your invention with a registered patent attorney to determine whether your invention is sufficiently nonobvious over the prior art.  Obviousness may be overcome by arguing to the patent office by arguing secondary factors of nonobviousness.

Secondary Factors of Nonobviousness

In many cases, arguing secondary considerations will allow you to overcome rejections based on obviousness.  Some of the secondary factors include:

• • Commercial Success – Commercial success of the product can be used to argue that the inventive aspects of your product was not obvious, otherwise the industry would have implemented those features to capitalize on its success.
  • Long Felt But Unsolved Need – Solving a long felt need to a problem typically will overcome a rejection of obviousness.
  • Failure of Others – In instances where others have tried, but failed, to reach the invention, an argument can show that because others have failed, the invention is nonobvious.
  • Solves Unrecognized Problem – If those of ordinary skill in the art would not have recognized the problem, then the prior art cannot be held to be an obvious variation of the described invention.
  • Contrary to Prior Teachings – In many instances, an invention will specifically teach away from a specific solution.  An invention that is contrary to the prior is likely to be overcome as prior art.
  • Impossible to Combine – The patent office may combine multiple prior art to teach away your invention.  If the combination of the two inventions would not operate for its intended purposes, then the inventions cannot be combined to render your invention obvious.

The public interest is another factor that may influence the patentability of an invention. If the patent office believes that the invention may be harmful to public health or safety, it may refuse to grant a patent.

Prior Use: If the invention has been in public use or for sale for more than a year prior to the filing of the patent application, it may not be patentable.

International Treaties: International treaties and agreements may have an impact on patentability. The TRIPS agreement, for example, establishes minimum standards for patentability that member countries must meet.

Genetic Material: Genetic material and processes for modifying genetic material are not considered patentable subject matter in some countries.

Plant Varieties: Some countries have special rules regarding plant variety patentability. Plant patents or plant variety protection certificates, for example, can protect plant varieties in the United States.

Method of Treatment: In some countries, medical treatment methods are not patentable.

Business Methods and Software: Business methods and software may be patentable in some countries but not in others.

Non-Functional Elements: Non-functional elements, such as decorative elements, may not be patentable.

Disclosure: The invention must be disclosed in such a way that someone skilled in the relevant field can understand and reproduce it.

Exclusions: Certain subject matter, such as inventions that violate public policy or morality, may be excluded from patentability. Methods of cloning or genetically modifying human embryos, for example, are not considered patentable subject matter in some countries.

The Basics of Patentability:

The ability of an invention to be granted a patent by the patent office is referred to as patentability. An invention is patentable in general if it meets the legal requirements for patentability, which include novelty, non-obviousness, and usefulness. However, determining whether an invention is patentable can be a complicated and nuanced process, with many factors to consider. In this article, we will look at the various factors that influence whether an invention is patentable.

Novelty:

The requirement of novelty is one of the primary requirements for patentability. This means that the invention must be novel and not have been disclosed previously in the prior art. Prior art includes all information available to the public prior to the invention date, such as previous patents, publications, and public knowledge. An invention disclosed in the prior art is not considered novel and therefore cannot be patented.

Non-Obviousness:

Non-obviousness is another important requirement for patentability. This means that the invention must be obscure to someone with ordinary skill in the art. In other words, if the invention is something that anyone in the relevant field could have easily invented, it is not considered non-obvious and thus cannot be patented. Non-obviousness is frequently the most difficult requirement to meet because it necessitates a subjective assessment of the inventive step of the invention.

Usefulness:

An invention must be useful in addition to being novel and non-obvious in order to be patentable. The term “usefulness” refers to the invention’s practical application or utility. It must be more than a theoretical concept or idea. Most inventions are created with a specific purpose in mind, so meeting the usefulness requirement is generally not difficult.

The following is the subject matter:

The subject matter of the invention is another factor that determines whether an invention is patentable. In general, the subject matter should be patent-eligible. Natural laws, natural phenomena, and abstract ideas, for example, are not patentable. There are some exceptions to this rule, such as when a natural law is applied in a specific and useful way.

Statutory Restrictions:

There are some statutory limitations that may prevent an invention from being patentable. For example, if the invention was published or publicly disclosed more than one year prior to the filing of the patent application, it is no longer patentable. Similarly, if the inventor used or sold the invention publicly before filing the patent application, it may be barred from receiving a patent.

Contact a Tucker Law Patent Attorney

If you have any questions, contact a patent attorney with Tucker Law today.  With an office conveniently located in Fort Lauderdale, Tucker Law services clients throughout South Florida, including West Palm Beach, Broward, Fort Lauderdale, and Miami-Dade.  Call the Firm toll-free at 1-800-TUCKERWINS or or send us an email through the Firm’s website.  A firm attorney will contact you for a free consultation.