Patentability is whether or not an invention is patentable. There are four criteria for an invention to be patentable. This article discusses the four criteria for patentability under United States (U.S.) patent law and under the International criteria of the Patent Cooperation Treaty (PCT). Under U.S. law the four criteria of patentability are: 1. patent eligible subject matter, 2. useful, 3. novel, and 4. non-obvious. Under International treaty the four criteria of patentability are: 1. patent eligible subject matter, 2. novelty, 3. inventive step, and 4. industrial applicability.
Carson Patents‘ United States Patent and Trademark (USPTO) registered patent attorney can help you make these determinations and explain the reasoning. Schedule a free consultation with our patent attorney and start the process to find out if your invention is patentable. Important Note: There are statutory bars to patentability, as well as conditions where there is an exception to patentability.
4 Patentability Criteria – Eligible, Useful, New, and Not Obvious
Determining whether an invention is patentable is best done in two evaluations. First, evaluate whether the invention meets the first requirement, patent eligible subject matter. Then, second, evaluate whether the invention is useful, new, and not obvious under U.S. patent law, or whether the invention is novel, inventive, and industrially applicable under the International criteria. It is best to determine patentability in these two evaluations to minimize the cost of prior art searching.
Some things are not patent eligible subject matter. For example, In the Human beings, abstract ideas, laws of nature, and natural phenomenon are not patentable. To be patent eligible, and invention must be a process, a machine, a manufacture, or composition of matter. Making this determination generally does not require a prior art search. So, you generally can find out if your invention is eligible subject matter. At Carson Patents we will tell you for free if your invention is eligible subject matter during our free consultation.
First Evaluation – Is the Invention Patent Eligible Subject Matter
The first evaluation is to determine if an invention is eligible subject matter. This is done first because a prior art search is not generally needed to for this analysis so it is generally free. If the invention is a human being, an abstract idea, a law of nature, or a natural phenomenon it is not eligible for patent protection. But there are exceptions where the invention is also something more. We recommend consulting with a patent attorney or patent agent to help determine if the invention is something more. In the U.S., there are four categories of patent eligible subject matter the invention must be a process, a machine, a manufacture, or composition of matter.
4 Categories of Patent Eligible Subject Matter
- A process defines actions. An act, step, or a series of acts or steps is generally a process.
- A machine is a concrete thing. A device or apparatus made of parts, devices and/or combinations of parts and/or devices generally defines a machine.
- A manufacture is a product (tangible article). A new form, quality, property, or combination through man-made or artificial means generally defines a manufacture.
- A composition of matter is a combination of two or more substances or composites.
Second Evaluation – U.S. Law – Is the Invention Useful, New, and Non-Obvious
Provided that the invention is patent eligible subject matter clearing past the first evaluation we proceed to the second evaluation. The second patentability evaluation is whether the invention meets the requirements to be patentable under the law. Is it useful, new, and not obvious.
3 Part Determination of Utility, Novelty, and Non-Obviousness
- Useful: First, as required under 35 U.S.C. §101, is a determination whether or not the invention is useful. Any non-criminal or non-trash use is acceptable. Most inventions meet this patentability requirement.
- Novel: Second, as required under 35 U.S.C. §102, whether or not the invention is new. The invention cannot exist in the prior art or conflict with another invention or idea. A prior art search is conducted to determine if the invention is already available.
- Non-obvious: Third, as required under 35 U.S.C. §103, whether or not the invention would be obvious to try for a person having skill in the art of making things like the invention. The prior art from the novelty search is used to determine whether the invention would be obvious to a person skilled in the art.
United States Invention Patentability Laws
35 U.S.C. §101 Inventions patentable.
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 therefor, subject to the conditions and requirements of this title.USPTO Manual of Patent Examining Procedure
35 U.S.C. §102 Conditions for patentability; novelty.
(a) NOVELTY; PRIOR ART. – A person shall be entitled to a patent unless – (1) 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, or (2) the claimed invention was described in a patent issued or in an application for patent published or deemed published, in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.USPTO Manual of Patent Examining Procedure
35 U.S.C. §103 Conditions for patentability; non-obvious subject matter.
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. Patentability shall not be negated by the manner in which the invention was made.USPTO Manual of Patent Examining Procedure
Second Evaluation – International Criteria – Is the Invention Novel, Inventive, and Industrially Applicable
As mentioned above, the patentability criteria differs for the International Patent Cooperation Treaty (PCT) applications. The last three criteria for patentability, under the International law, are 1. novelty, 2. inventive step, and 3. industrial applicability. Comparatively, the PCT criteria are similar to the U.S. requirements for novelty, non-obviousness, and utility.
3 International Patentability Criteria
- Novelty: The first patentability criteria for a PCT patent application is whether an idea or invention is novel. U.S. law and PCT applications evaluate novelty the same. Similarly, if the invention exists in the prior art, it is not new, or novel. Also, all information available to the public in any form before the date of invention that might be relevant to claims of novelty and non-obviousness is prior art. Only novel inventions are patentable.
- Inventive Step: The second patentability criteria for a PCT application is a determination of whether an idea or invention has an inventive step. The PCT criteria evaluates inventive step like the the U.S. evaluates the non-obviousness criteria: whether the invention would be obvious to try for a person skilled in the art.
- Industrial Applicability: The third patentability criteria for a PCT patent application is a determination of whether an idea or invention has industrial applicability. Industrial applicability for a PCT patent application is evaluated similar to the usefulness criteria under U.S. law. If the invention has any non-criminal use and is more than mere trash, it is likely to meet the usefulness criteria. Only useful inventions are patentable.
Important Note: Prior art is used to determine inventive step similar to the U.S. requirement determining non-obviousness from the prior art. If a combination of prior art would render the invention obvious to a PHOSITA, the invention is not patentable.
What is Prior Art?
Prior Art can be Any Information Available. Prior art is anything available in print or electronically in any country in any language. Prior art is all information available to the public in any form before the date of invention that might be relevant to claims of novelty (35 U.S.C. §102) and non-obviousness (35 U.S.C. §103). In other words, prior art is any disclosure relevant to claims of originality and obviousness. Specifically, any similar disclosure, or combination of disclosures, to a patent claim may prevent the claim from being allowed.
What does Art mean?
The art of an invention belongs in the technological area to which the invention pertains or with which it is most nearly connected. What the invention is determines the art. The technological area(s) an invention is classified into for examination and indexing are frequently similar sounding. For example, if an invention’s classification included words like toys and games, the art would be “making toys and games.”
The “art” matters because the description from a patent application must enable a person having ordinary skill in the art, to both make and use the invention. So, if the invention were a new toy, a person having ordinary skill in the art of making toys would need to be able to make and use the invention from the description and figures submitted with a patent application for the new toy. Our patentability expert can help you make this determination. Contact our team at Carson Patents for an expert patentability report for your invention or idea.
What does Patented mean?
Patented is defined as when a product or process has an issued patent and is legally protected. The issue of a patent has conferred legal protection for the product or process. A patent is the legal right to control the making, using, and selling of the invention for the duration of the patent.
Patented means that the patent office examined the patent application and found some claim(s) allowable. Allowed claim(s) are sent a notice of allowance and an offer to pay an issue fee and have a patent issued. The patent is published and issues after the issue fee is paid. The allowed claim(s) described in the issued patent are then patented (legally protected). Patent protection offers legal rights to control making, using, and selling for the duration of the patent in the country or regions where it is issued.