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. These are discussed below.

What is Novelty of an Invention? 

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.

Why the Time of Disclosure Matters?

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.

Why the Time of Filing of an Application matters? 

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.

What is the Non-Obviousness Patent Requirement? 

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.

What is the Usefulness Patent Requirement? 

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.

Related Topics

• Intellectual Property Law (Intro)
• What is Intellectual Property?
• What is the purpose in granting intellectual property rights?
• What is required to capture or secure intellectual property rights?
• California Labor Code 2870
• What are Trade Secrets?
• Non-Disclosure Agreement
• Patents or patent rights?
• Letters Patent
• Primary types of patents?
• What Can I Patent?
• Requirements for a valid patent?
• Can your Invention be Patented?
• What is a Patentability Search?
• When is a Patentability Search Necessary?
• Why is a Patent Search Important?
• Requirements for a design patent?
• How to Do a Design Patent Search
• Cost of a Design Patent
• Requirements for a utility patent?
• Why Do You Need a Utility Patent?
• Plant Patent?
• Process for securing patent rights?
• Patent Search
• Basics of Doing a Patent Search
• 5 Rules for Effective Patent Searches
• What are Patent Databases?
• Tools for Patent Searches
• DIY Patent Search
• Understanding Patent Keyword Searches
• Patent Searches for Software
• Doing a European Patent Search
• WIPO Patent Search
• Cost of Doing a Patent Search
• Patent Search vs Patent Analysis
• Structure of a Patent
• Patent Filing Date
• Patent Attorney
• Do You Need a Patent Lawyer?
• Applying for Design patent
• Provisional Patent?
• Applying for Provisional Patent
• Doing a Provisional Patent Search
• How to Draw Up a Provisional Patent
• Converting a Provisional Patent to a Non-Provisional Patent
• What Does Patent Pending Mean?
• Process for enforcing ones patent rights?
• Patent Infringement
• Patent Troll
• What is a Trademark?
• Types of trademark?
• Requirements to capture trademark rights?
• Distinctiveness requirement for a Trademark?
• Determining whether a trademark is sufficient distinctive?
• What is Federal Trademark Registration?
• Conducting Trademark Search
• Should I Conduct a Trademark Search?
• Trademark Application
• Drawing a Trademark
• Filing for federal trademark registration?
• Protections of trademark rights under state law?
• Primary reasons for rejecting a trademark application?
• Common trademark designations?
• Trademark infringement?
• Enforce trademark rights?
• Demonstrate infringement of a trademark?
• What is a copyright?
  
• Digital Millennium Copyright Act or DMCA Explained
• Basics of Copyright Law
• What are the rights of a holder of a copyright?
• What are the elements of a copyright?
• How long is the period of copyright protection?
• What is the process for registering a copyright?
• Who may claim and secure copyright protection?
• What are infringement and the process for enforcing a copyright?
• What are the defenses available against a claim of copyright infringement?
• Public Domain Works
• Licensing Agreement
• End User License Agreement
• What is Fair Use of copyright?
• What is the First Sale Doctrine?
• What international protections exist for intellectual property rights?
• Paris Convention