What are the Standards of Patentability?

A patent is a federal grant which gives exclusive right to the inventor to exclude all other from making, using, exporting, offering for sale, or selling the invention.  The exclusive right is not a license.  The four categories of what is patentable includes; process or method, machine/apparatus, article of manufacture, or composition of matter.  Abstract ideas are unable to obtain a patent.  If the invention fits into one of the above four categories, the inventor must meet three requirement to obtain a patent; new/novel, usefulness, and non-obvious.

A patent consists of a quid pro quo that sets forth terms of the bargain struck between the inventor and public when a patent granted.  By providing the invention to the patent office it is considered that you have taught it to the public and by doing this the government gives the inventor the patent and monopoly over the invention.  The inventor must fully disclose the invention and the method of making and using it, this is called the enablement requirement.  The enablement requirement doesn’t require a blueprint method for mass producing it (ie. size, etc are not needed unless it is specifically important for the invention to work).  Along with the enablement requirement, the inventor must disclose the best mode in the patent application what he considers the best mode made for practicing his invention.

The usefulness standard is defined as, “whoever 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 therefore, subject to the conditions and requirements of this title.”  Under this standard the new invention must be something man-made.  For example, man-made chemical compounds are patentable.  Congress is free to declare particular types of inventions unpatentable for a variety of reasons, such as if it is designed to harm the public.  An invention must have a well-established utility.  If a person of ordinary skill in the art would immediately appreciate why the invention is useful based on the characteristics of the invention a patent can be granted.  The utility is specific, substantial, and credible.  A patent may be denied for lack of utility if the invention fails to operate as claimed.

The novelty requirement standard discusses if the invention was known or used by others in this country before application for the patent was filed.  Prior art is anything that can be use to challenge novelty or patentability of an invention.  Prior art is used in both litigation and patent application.  Inventors/attorneys are conclusively presumed to have knowledge of all prior art.  If a single reference discloses all of the elements in question it is called anticipation, or reading the claim on someone else’s patent.

The non-obviousness requirement is the most cited requirement in litigation.  The 3 prong test are, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved.  The factors that are considered in determining someone’s level of ordinary skill in the pertinent art include: the education level of the inventor, type of problems encountered in the art, rapidity with which innovations are made, sophistications of the technology, educational level of active workers in the field.  Not all of these factors may be present in every case. The fourth prong of the test is considered secondary and consists of the commercial success, recognition and acceptance of the patent by competitors who take licenses under it to avail themselves of the merits of the invention.

The United States Patent and Trademark Office recently updated its own examination guidelines with seven “rationales” under which an examiner might reject an applicant’s patent claims as obvious:

  1. Combining prior art elements according to known methods to yield predictable results;
  2. Simple substitution of one known element for another to obtain predictable results;
  3. Use of known technique to improve similar devices (methods, or products) in the same way;
  4. Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
  5. “Obvious to try”- choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
  6. Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces, if the variations would have been predictable to one of ordinary skill in the art;
  7. Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.


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