Before you apply for a patent, make sure to research the patentability of your invention and determine if it meets the requirements of patent eligibility as required by the United States Patent and Trademark Office (USPTO).
Basic Requirements For Obtaining A Patent
The U.S. Patent Act sets one of the most broad standards in patentability among all countries. You must consider the requirements for patentability when you file a provisional application or non-provisional patent application. Patentability requires that the invention be statutory, novel and useful. Some requirements, such novelty or non-obviousness may require a preliminary patent search to ensure that the invention is patentable. An invention is patentable only if it meets the following four requirements:
Novelty
To qualify for a patent, an invention must be novel and useful. Novelty means that it has not been previously described, published, used in the public, or offered for sale. Publicly published inventions are considered prior art and not new. It is therefore important for the inventor to prove novelty in his or her application. For example, a new battery technology cannot be patented if it has already been published in the public domain.
However, in the United States, there is a one-year grace period after the publication of the invention within which the inventor is to file a patent application. Upon lapse of this period without filing a patent application, the publicly disclosed invention forms part of prior art.
The novelty requirement applies to new products as well as existing inventions and is one of the most important hurdles to patentability. It involves subjective judgment, but must be met to ensure that the invention is truly new. It is codified in law under 35 U.S. Code § 102 which reads in part;
A person shall be entitled to a patent unless 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.
In the past, the royal prerogative could grant patents. If a king produced stained glass, the king could grant a patent to it, which would prevent other stained glass makers from making the product. Eventually, the monopoly system stifled productivity and was abolished in England. Likewise, the framers of the United States Constitution wanted to protect American citizens from such situations. Because of these concerns, the novelty requirement is the foundation for patentability.
While novelty is a prerequisite for a patent in the United States, the novelty requirement is not universal. In major Western European countries, it is not required for the invention to be completely new; patents must be filed before prior art activity is publicly available. Otherwise, the patent will not be granted. Moreover, the patent must be filed before public disclosure or any commercial activity that involves it.
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Non-obviousness
This is the requirement that the invention must not be obvious if it is to be patented. It is entrenched in law at 35 U.S. Code § 103 which reads in part;
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.
As an example, a product or process that is not obvious can be patented, provided that the invention is new and useful. This can be accomplished by combining the use of a particular ingredient with another ingredient.
However, the question of what is obvious and what is not is a fact that has been under debate since the earliest patent laws were enacted. While patent courts generally agree that the invention must not be obvious to a person of ordinary skill in the art, they do not have a consensus on what qualifies as “ordinary” or “unique.” While advanced academic degrees and years of experience are factors in determining whether a certain invention is patentable, they do not establish that person to be “ordinary.”
The current standard for determining whether an invention is obvious is called the POSITA test. In this test, the inventor must demonstrate that the new invention is more than a “logical increment” over an existing invention. In order to determine if a product or process is obvious, the USPTO considers the POSITA standard (a typical scientist or engineer who has expertise in the subject area of the invention). For example, a non-obvious invention may be as simple as substituting a known element in a prior art system.
If a product or invention is not obvious, the non-obviousness requirement can be applied if the inventor is unable to demonstrate that the product or process does not meet the requisite distance from the prior art.
Utility
To obtain a patent for an invention, you must prove its utility. This requirement comes from 35 U.S.C. SS101, which requires that an invention be useful for a specific purpose. Your invention can’t just be a new way to fix a leaky faucet, for example. It must actually solve a problem in the present day. This doesn’t mean that it needs to be better than an existing product – it just needs to solve a current problem.
To protect your invention, you must file a utility patent application with the USPTO. The patent examiner will examine your application to determine whether it meets all the requirements for a patent. In particular, the patent examiner will look at whether or not your invention is useful, novel, not obvious and has a sound theoretical basis. If your invention is in the manufacturing industry, it might be eligible for a patent based on past success. However, a drug may not receive a patent because of the lack of scientific backing. Only utility-based patents require a substantial amount of research before they are issued.
There are exceptions to the utility requirement. Some products are inoperable and do not work at all. In such cases, you can meet the utility requirement by describing the product in detail and explaining its function and use. For instance, a perpetual motion machine would not meet the utility requirement.
To register a utility model, you must meet the formal requirements for a patent application and satisfy the basic requirements. Once your utility model is registered, you have the right to commercially work on the model. You may also seek an injunction or compensation for damages and unfair profits if others infringe on your rights. A utility model can also be registered without undergoing substantive examination. So, if you believe your invention is unique, be sure to file a utility model application.
The process of obtaining a utility patent varies depending on where you live. It can take anywhere from two to five years to receive your utility patent.
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Written description
In addition to the claims, a patent applicant must provide a detailed written description of the claimed invention. The written description must describe how the invention was reduced to practice, drawings, or a structural chemical formula. The applicant must also provide information about any identifying characteristics that might allow an ordinary person to identify the invention by its function.
This requirement is found at 35 U.S. Code § 112 which reads in part;
“The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same…..”
The written description is required for a patent application and is a key part of the application process. It serves as the applicant’s evidence of the invention, including any relevant identifying characteristics. These characteristics may include the complete or partial structure, other physical or chemical properties, and/or functional characteristics, when they are coupled with known relationships between structure and function. For example, a chemical compound may be regarded as an invention if it is more efficient to use in a given environment.
The written description requirement must be met even if an amendment changes the claims. While reciting a subgenus or species that is not disclosed violates the written description requirement, an amendment to the specification may not obstruct the validity of the claimed invention. The Federal Circuit has held that a claim may not be invalidated if it violates the written description requirement because it does not describe the subgenus or its range.
If a claim is not properly supported by the written description, the applicant may amend the abstract, specification, or drawings to make it more specific. The written description may also include information that is not included in the application. The written description does not have to be a long document; however, it must be complete to meet the patentability requirement. The Patent Office is the ultimate decision maker on whether a claim is patentable.
Finally, the written description must demonstrate that the invention is in the possession of the applicant.
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Enablement
A court may rule that an invention lacks enablement if a working example is not available. This decision is based on how broadly the patent specification enables the claimed invention. In other words, the invention may be enabling if a skilled person can create the same effect with the same methods and materials without undue experimentation. There is no way to prove enablement based solely on post-filed data.
To avoid a rejection, the drafter must provide working examples and prophetic examples that demonstrate the claimed invention. Working examples are based on actual work performed, while prophetic examples are based on predicted results. In addition to providing working examples, the drafter must provide an adequate description of the alleged invention.
Depending on the nature of the claimed invention, practitioners may choose to describe it in different ways. For instance, the practitioner may choose to make patent claims to cover a genus, a sub-genus, or a species. A claim may be broad, but a narrow, encompassing claim may be able to protect the entire patent. This approach is reminiscent of what the Federal Circuit and EPO have ruled on enablement.
Definiteness
To protect the rights of an inventor, patent laws require that claims be as definite as possible. The requirement of definiteness is known as the “definiteness standard,” and it is intended to provide public notice of ownership of the patent and discourage infringement. This requirement is critical in deciding whether an invention qualifies for a patent. To learn more about the definiteness standard, read below.
The definiteness requirement is the foundation of a patent’s protection. If the claims are too vague, the application will fail. This can be resolved by reciting a portion of the claim as a “step in performing a function,” or “means for fastening an object. But these claims are only sufficiently definite if the patent specification describes the corresponding structure.
However, if the claim is indefinite, the examiner must acknowledge the applicant’s best efforts and provide reasons for his decision. In a case where the claim was not definite, the examiner may suggest alternate methods to avoid infringement. If the applicant can demonstrate that the claim is definite, the examiner may accept it. In the end, the applicant should be given the opportunity to suggest alternative methods and arguments.
A patent application with a claim that lacks definiteness will be rejected if the examiner cannot determine a determinable embodiment of the invention. For this reason, a patent application is required to contain a definite claim.
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Best mode
In the best mode of filing a patent application, the inventor will disclose what they prefer. The applicant should be specific about their preferences; otherwise, they could end up obscuring their invention. In some cases, it is better to include the preferred method, while in others it is better to exclude it altogether. However, it’s important to be clear about your preferences and make sure that your patent prosecutor knows about them.
A written description of the invention must include the preferred mode of performing the invention. This description must be comprehensive and precise, and should include the preferred method of performing the invention. Besides, the written description must be detailed in a way that allows the examiner to make the best decision. The inventor should also provide an example of the preferred mode of performing the invention. This way, the examiner can easily determine whether the invention is new or has been around for a while.
Moreover, the best mode requirement also provides protection to the public. The purpose of the best mode requirement is to prevent the public from leaking an invention’s secret or trade secrets.
Sworn oath
A Sworn Oath for a Patent Application is required by 37 CFR 1.63. In it, the applicant must state that they are the inventor of the invention and the title of the invention on the specification as filed. The oath or declaration should include the name of the inventor, the serial number of the application, and the filing date. An applicant may use their last name or their family name to identify themselves.
In addition, the applicant must swear that he/she is the first or original inventor of the invention. The applicant must also state their country of citizenship. If a joint inventor is involved, the applicant must include their names in the Sworn Oath. In addition to the oath and declaration, the applicant must sign the corresponding assignment statement. If both co-inventors are listed on the application, the inventor must state their respective roles as joint inventors.
If a patent application is not a provisional application, the applicant must execute an oath or declaration as part of the patent application. The oath must state that the inventors are the original inventors of the invention and that they have authorized the application. The oath or declaration must be signed in accordance with 37 CFR 1.33(b)(1). If it is not signed, the application will be treated as a transmittal letter.
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Drawings
There are several reasons why patent drawings are essential to the patent process. They help determine whether an invention is novel and not obvious, and they help establish priority of the invention, particularly in first-to-file countries. Quality patent drawings make the entire process much easier, and they have even been used by the United States Court of Appeals for the Federal Circuit. However, it’s important to remember that even if your invention is obvious, patent examiners may not appreciate it if you’re not providing patent drawings.
Some inventors may not want to hire a patent illustrator, so they decide to draw the drawings themselves. This is a risky tactic, however, and you could lose your patent if your drawing skills are lacking. For non provisional patents and chemical formulas, however, drawings must be provided. Regardless of the type of patent application you are filing for, you should always include as many drawings as possible.
All drawings must be numbered. In addition to page numbers, they must be positioned so that they can be easily read. Drawings should be on A4-sized sheets with margins of at least three centimeters at the top, bottom, and right. They should be at a scale large enough to clearly depict the invention. Dimensions should not be outlined on the drawings. Drawings must be numbered consecutively and have the applicant’s name, signature, and sheet number.
