What Can You Patent?

What Can you Patent?  Overview of U.S. Patent Laws regarding what you can patent.

What Can You Patent?

Have you every wondered, what can you patent?  You can patent almost anything as long as you can demonstrate that the invention is useful, novel and non-obvious.  Examples include, methods of doing business, processes you use in your business, machines, articles that are manufactured, compositions and formulations.

Here are some examples of some of the more well-known patents:

U.S. Patent No. 5,960,411 (Amazon One-Click Patent)

U.S. Patent No. 223,898 (Light Bulb)

U.S. Patent No. 1,867,377 (Sliced Bread)

U.S. Patent No. 8,825,597 (Dropbox Network Folder Synchronization)

U.S. Patent No. 6,285,999 (Google PageRank)

What You Can Patent

U.S. Patent law statutes states that anyone who “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,” assuming all requirements are met in the law. The law defines a “process” as a “process, act, or method, and primarily includes industrial or technical process”. It also defines “manufacture” includes matter that is made and any manufactured matter. A “composition of matter” refers to chemical compositions as well as mixtures of ingredients and newly created or discovered chemical compounds.  A “machine” speaks for itself.

Take away: you can patent almost anything including processes/methods, machines, compositions of matter (e.g., new formulation, drug, new materials).  Thousands of industrial processes, internet methods, machines and new ways of doing things are patented every day.

What You Cannot Patent

However, a few areas of subject matter are not patentable under Federal law. For instance, inventions that include laws of nature, abstract ideas, and physical phenomena can not be patented without having substantially more than those types of inventions listed in the claims. It has been made clear that a patent cannot be granted that is based upon an idea or suggestion.

One condition that patent law sets forth for inventions is that the invention must be “useful”. The word “useful” is defined by law as having a useful purpose, which includes the qualification that the invention must be operative. For example, a machine that does not operate and does not actually fulfill its intended purpose is not “useful” and therefore cannot be patented.

More Complex Patent Conditions

Novelty and Non-Obviousness

While on a more basic level there are requirements for what can or cannot be patented, the patent law also describes more complex conditions on whether or not an invention can be patented. Two of these conditions are known as the novel or non-obvious. Essentially, these two conditions state that the invention must be new and is not just two patents combined together.

Novelty

The language of the patent law states that an invention cannot be patented if:

“(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention ” or

“(2) the claimed invention was described in a patent issued [by the U.S.] or in an application for patent published or deemed published [by the U.S.], in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.”

There are a few exceptions to this requirement of patent law and they only apply in very limited circumstances.

If an invention has been disclosed, known or published to the public, then the invention may not be patentable.  Clients are advised to file for patent protection before they disclose their invention in any way.

Non-Obvious

Finally, an invention cannot be patented if the invention is obvious in light of other already patented inventions. To be patentable, your invention cannot be obvious to what is known as a “person of skill in the art.”  The U.S. Patent Office will take into consideration various factors when determining whether or not an invention is obvious.  For example, the U.S. Patent Office will consider:

Obviousness is ultimately a question of law that a judge will decide based on various factual inquiries.  With that said, the U.S. Patent Office will make its own determination of obviousness during the application process.  The factual inquiries that are made to determine obviousness are often referred to as “the Graham factors” and include the following:

(1) Determining the Scope and Content of the Prior Art.

The Patent Office and, if the patent is litigated, the Courts, will determine the scope and content of the prior art for a particular invention.   The scope of the claims will be given their broadest reasonable interpretation consistent with any statements made in the patent application or by applicant during prosecution of the patent application.

(2) Ascertaining the Differences Between the Claimed invention and the Prior Art.

The Patent Office and, if the patent is litigation, the Courts, will determine the differences between the claimed invention and the prior art.

(3) Resolving the Level of Ordinary Skill in the Art of The Invention.

The person of ordinary skill in the art or “phosita” as it often referred to is a hypothetical person who is presumed to know all of  the relevant prior art at the time of the invention.  The obviousness determination tries to determine whether “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…”

(4) Secondary Considerations of Non-Obviousness.

In addition to the above inquiries, evidence that is sometimes referred to as ‘‘secondary considerations’’ or “objective indicia of non-obviousness,” must be considered.  Essentially, secondary considerations are a check on the determination reached through the inquiries above. In other words, the invention may appear to be obvious, but if reality does not match theory, the invention is then determined to be non-obvious.

Evidence of secondary considerations include evidence of commercial success, long-felt but unresolved needs, failure of others, copying by the industry and unexpected results.

It is important to note that secondary considerations are not equally weighed. For example, there are many reasons why products may enjoy commercial success, such as a great marketing or superior access to trade channels. In those situations, the invention itself is not wholly responsible for the commercial success of the product. Rather, it was something else. In order for commercial success to be useful, there needs to be a connection between the commercial success and the invention.

Another secondary consideration is long-felt but unresolved need. If there has been a well-documented need or desire in an industry that has gone unanswered or unmet, then this would be evidence of secondary consideration.  If the long felt, well-documented need is met by the invention, this serves as fantastic evidence to demonstrate that said invention is non-obvious.

The evidence of secondary considerations can be included in the specification, accompany the application on filing or be provided to the Examiner during patent prosecution.

It is worth noting, however, that just because your invention has never existed in the past does not in and of itself mean that it would be considered non-obvious. What makes a long felt, well-documented need so powerful is that the invention has never existed even as the industry has been searching for solutions. The key is not that it hasn’t existed, but that the invention hasn’t existed despite efforts to find a solution.

Conclusion

While it may be difficult to research whether your idea or invention is patentable, the registered Patent Attorneys at Partners Law Group are here to help. These legal standards and condition are difficult to grasp, but with the help of a knowledgeable patent attorney, you too can get your inventions patented. The patent process can be long and hard, especially if needing to deal with rejections from the USPTO and that is why you require a top of the line patent attorney.

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