Basics of Patentability
Obtaining a utility patent is not always an easy task. In order to do so, an inventor, normally assisted by a patent attorney, must demonstrate to the USPTO that a particular invention is worthy of a patent.
The USPTO evaluates worthiness using a strict set of patentability requirements aimed at ensuring that granted patents encourage innovation and productivity.
The five major patentability requirements are (1) subject matter, (2) utility, (3) novelty, (4) non-obviousness, and (5) the writing requirements. We will address of each of these criteria in turn.
1) Subject Matter Eligibility
35 U.S.C. § 101 (the “Patent Act”) defines patentable subject matter as any “process, machine, manufacture, or composition of matter.” These are very broad categories that cover virtually all creations that most people would consider to be “inventions” in the classical sense of the word. Indeed, the legislative history of the Patent Act shows that Congress intended it to cover “anything under the sun that is made by man.”[i] However, there are several exceptions, including abstract ideas, laws of nature, natural phenomena, artistic and literary creations, and printed material. The justifications for excluding such subject matter from patent law is that these subjects are either committed to copyright and trademark law (like artistic creations and printed material), or are simply too general to honestly be considered the invention of a particular person (like abstract ideas and laws of nature).
The USPTO does allow a certain amount of wiggle room when it comes to patents that involve some of these exceptions, specifically in the areas of laws of nature, natural phenomena, and abstract ideas. Following the recent U.S. Supreme Court decision in Alice Corp. (Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014)), the USPTO issued guidance establishing that it will allow a patent for an invention directed to one of the above exceptions so long as any of the elements of the invention render it, as a whole, “significantly more” than the exception.[ii] This language is vague and does not amount to a bright line rule; it is concerned mainly with ensuring that such an invention is not merely an abstract idea, etc. To illustrate, the USPTO might allow a patent on a genetically engineered living organism if it is significantly different from anything found in nature. For an abstract idea, the USPTO might allow a patent to issue if the idea elaborated were connected to a particular apparatus for utilizing it.
Utility, the second condition on patentability, also comes from 35 U.S.C. § 101, and requires that the invention be useful. This requirement is rather straightforward, and is designed to satisfy the constitutional objective that the government support the “useful arts.”[iii] The USPTO interprets the utility requirement broadly, meaning that an invention is useful basically if it serves the purpose for which it is designed. This seems like a non-requirement, but its breadth is helpful because the usefulness of a particular invention is often not fully realized until many years after it is patented. Although the utility requirement is a low hurdle, it is not to be ignored. Requiring an invention to be useful necessarily implies that it must be useful for a particular purpose. For example, a random configuration of hoses and valves cannot be said to be useful unless it is directed toward the fulfillment of some objective. Since the USPTO is not inclined to guess what that objective is, the inventor must clearly specify it in the patent application.
The third requirement is novelty and comes from 35 U.S.C. § 102. Of all of the conditions of patentability, novelty is perhaps the most important and is a very common stumbling block during the prosecution process. Novelty requires that the invention be different from the prior art, which is broad and includes all previous knowledge, use, patents, and publications in the field of the invention at issue. There are several reasons why we require novelty for a patent, not least of which is history; some of the first patents ever granted in England were essentially state-sanctioned monopolies in certain established fields of practice that were available for sale to the highest bidder. They could also be granted by royal prerogative; if the king liked a particular stained glass maker, he could grant a patent on the art of stained glass to that artist, meaning that no one else in England would be able to produce stained glass unless they licensed the patent. This system did not encourage productivity, but stifled it. The monopoly system was eventually abolished, and the framers of the Constitution similarly wanted to avoid it by allowing patents only for new discoveries and not established arts. Thus, the novelty requirement fulfills the constitutional objective of encouraging productivity and innovation by limiting the grant of patents to new inventions.
The fourth condition is non-obviousness, which arises from 35 U.S.C. § 103. The non-obviousness requirement ensures that an invention can be patented only if the differences between the particular invention and the prior art are inventive and not those that might have occurred to anyone of ordinary skill in the art. For example, assume that Inventor A has invented a blender with 10 speeds. Inventor B would not be allowed a patent simply by making the same blender with 12 speeds, because that improvement is not really inventive; anyone could come up with the idea to add speeds. Similarly, Gene Quinn from IP Watchdog explains it this way: Assume that invention X and invention Y are already in existence. An inventor probably could not obtain a patent on invention X+Y if such a combination likely would be obvious to one skilled in the X and Y fields. A useful test for obviousness is to ask whether a person of ordinary skill in the art would have found it obvious to make the claimed invention knowing all of the prior art references in that field. Non-obviousness, then, is a moving target and depends on the level of skill required in the art of the invention at the time it was made.
5) The Writing Requirements
The last requirements are the writing requirements, which come from 35 U.S.C. § 112, and are composed of the enablement, definiteness, and best mode requirements. Enablement requires that the inventor describe the invention in clear terms that would enable anyone skilled in the art to which it pertains to make it and use it without undue experimentation once the patent expires. “Undue experimentation” does not mean that the invention must necessarily be easy to reproduce; it means merely that the amount of experimentation required to practice the invention must be reasonable for an invention of its type. This also is clearly a moving target, and the detail of the description depends on the complexity of the particular invention. The other writing requirements are the definiteness and best mode requirements, which are both also concerned with effective communication of the invention to the public. Definiteness requires that the claims be written in terms understandable to those skilled in the art, and best mode, as its name implies, requires that the inventor disclose the best way to practice the invention (this is also called the preferred embodiment in a patent claim).
What the patentability requirements demonstrate is essentially a contract theory of patent law; in order for the public to grant an inventor a time-limited monopoly on an invention, we must ensure that the invention is truly novel and that the inventor teaches the public how to recreate it once the patent expires. As these criteria indicate, an inventor must pay attention to many different requirements in order to obtain a patent on an invention. While most inventors spend enormous amounts of time focusing on making sure that their inventions actually work, they must also be quite shrewd about satisfying the USPTO’s criteria if they want the government to grant them exclusive rights to those inventions.
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[i] S. Rep. No. 1979, 82d Cong., 2d Sess., 5 (1952)
[ii] 2014 Interim Guidance on Patent Subject Matter Eligibility
[iii] U.S. Constitution, Art. I, Sec. 8, Cl. 8