7. What are the general requirements for an invention or discovery to be capable of patent protection?
The subject of a claimed patent must be eligible for patent protection. Eligible subject matter varies slightly depending upon the type of patent. That is, a design patent must attach to some physical item, while a utility patent has a broader range of potential subject matter. Once determined to be patentable, a specific subject matter must be “novel” and “non-obvious”. These two requirements apply to all types of patents. Utility patents have an additional requirement and must also be “useful”.
Novelty – To qualify for patent protection, a creation must be novel. Novelty, in this context, goes beyond the requirement for newness. The subject matter cannot have previously been used, sold, or the subject of patent by another inventor within a year of the patent filing. In summary, this means that the patented item does not currently exist in the claimed form. There are two standards for novelty: 1) the time that the item is disclosed to the public and 2) the time of filing.
• Time of Disclosure: The subject of the patent cannot be known, used, or printed in a publication in this country prior to its creation in the US. The creation may be known or used in a foreign country, but it cannot be in a printed publication in a foreign country before it is created in the US. This generally means that if the item was previously known or in use by the public prior to the date of disclosure by the patent filer, it cannot be patented by someone other than the original discloser.
• Time of Filing Application: The creation cannot have been previously disclosed to the US public more than one year prior to the filing of the patent application. This means that the item cannot be advertised or in use by the general public. It cannot have been the subject of a patent application in the US or any other country. Further, it cannot be used or described in any publication prior to the application for patent.
⁃ Note: This generally means that once the item is disclosed to the public, the discloser has one year to complete the patent filing process.
Non-Obviousness – The non-obviousness requirement means that someone having ordinary skill in the field would not have a ready knowledge or understanding of the invention. That is, it cannot be readily or commonly understood to the average person in that field or industry. The average person in the field or industry is known as a Person Having Ordinary Skill in The Art (PHOSITA). Basically, if a creation is a logical embodiment of existing knowledge (items of creation already exposed to the world) it will not be eligible for patent protection. As such, the USPTO will examine all prior creations (prior art) in that field to see whether the PHOSITA would deem the proposed creation to be non-obvious.
• Note: Simply changing the basic design, size, or arrangement of an existing invention may be an obvious modification to the existing creation. As such, it would lack the element of non-obviousness. External factors, such as commercial success of the invention, may indicate that there is a novel aspect of the product in the marketplace.
Usefulness – Lastly, a utility patent (but not a design or plant patent) must be “useful”. This means that there must be some benefit or operational purpose to the invention. The petitioner must demonstrate that the creation serves an intended purpose. Even if the item is not currently in use and serving a purpose, it must address some theoretical need that could arise in the future.
• Note: In the commercial context, a product or process that does not address any identifiable need or want of any potential end user is likely not useful.
• Discussion: Why do you think the USPTO requires these elements (novelty, non-obviousness, and usefulness) when granting patent protection? Do you think each of these elements are necessary or should be required? Why or why not? What do you think about the PHOSITA standard for determining non-obviousness? Can you think of other efforts or showings that should be present?
• Practice Question: Patrick developed a native, smartphone application with supporting software capability. He believes that he will be able to commercialize his invention. He is curious about what he will have to demonstrate about his application in order to receive utility patent protection?