Patentability is a combination of two expert evaluations to address all four requirements: 1. patent eligible subject matter, 2. useful, 3. novel, and 4. non-obvious. Our expert can help you make these determinations. Is your invention patentable?

Important Note: There are statutory bars to patentability, as well as conditions where there is an exception to patentability.

Patent Eligible Subject Matter – First Evaluation

The first evaluation is a determination whether or not an idea or invention is patent eligible subject matter. A process, a machine, a manufacture, or composition of matter can obtain a patent. In the U.S., there are four categories of patent eligible subject matter:

  • Firstly, a process defines actions. An act, step, or a series of acts or steps is generally a process. 
  • Secondly, 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.
  • Thirdly, a manufacture is a tangible article. A new form, quality, property, or combination through man-made or artificial means generally defines a manufacture.
  • Lastly, a composition of matter is a combination of two or more substances or composites.

Useful, New, and Non-Obvious – Second Evaluation

The second evaluation is a three part determination. Firstly, (35 U.S.C. §101), whether it is useful. Any non-criminal or non-trash use is acceptable. Secondly, (35 U.S.C. §102), whether or not it is new. It cannot exist in the prior art or conflict with another invention or idea. Thirdly, (35 U.S.C. §103), whether it would be obvious to try for a person having skill in the art of making the invention. With our patentability expert, you get a prior art search and patentability study report for your idea or invention.

Determining Patentability is Best Done by an Expert

Do you need to know if your invention or idea is patentable? In the United States, a patentability expert is a USPTO Registered Patent Practitioner who practices in prosecuting patent applications. Our patent expert has successfully prosecuted many patent applications and can help you find out.

For an invention to be patentable, it must meet the four requirements (detailed above): 1. patent eligible subject matter, 2. usefulness, 3. novelty, and 4. non-obviousness. Our patentability expert (USPTO Registered Patent Attorney) does all of our searching, studies, analysis, and reports. We assure your invention is kept confidential with us. Carson Patents does not outsource any patent searching, studies, or reports. We believe that when we write the application, we need to have done the supporting work. Contact us to get started finding out if your invention is patentable.

What is Patentable Subject Matter? – U.S. Patent Law

For Patent Applications in the U.S. The USPTO uses four criteria to determine patentability. The four criteria under U.S. law are 1. patent eligible subject matter, 2. usefulness, 3. novelty, and 4. non-obviousness. The criteria for International (PCT) patent applications are slightly different and will be discussed in depth later. Two stages determine the invention’s patentability. The first stage evaluates the first criteria: patent eligible subject matter. The second stage is a determination of the remaining criteria: usefulness, novelty, and non-obviousness.

First Stage: Patent Eligible: The first stage of the patentability evaluation is a determination of whether or not an idea or invention is patent eligible. Patent Eligible Subject Matter (read more at USPTO) means an invention must be a process, machine, manufacture, or composition of matter. As recognized by the courts, the invention cannot be within the exceptions of laws of nature, physical phenomena, and abstract ideas. For instance, an invention cannot be patented if it defies the laws of nature.

Important Note: The criteria described here are based on United States law. In contrast, the criteria for International (PCT) patent applications differ.

Second Stage: Usefulness, Novelty, Non-Obviousness: Then, the second stage of the patentability evaluation analyzes the other three criteria: usefulness, novelty, and non-obviousness. Firstly, is the invention useful? If the invention has any non-criminal use and is more than mere trash, it is likely to meet the usefulness criteria. 

Secondly, is the invention novel? In other words, the invention must be new. Prior art determines novelty (35 U.S.C. §102). This means it cannot exist in any relevant information available to the public in any form before the date of invention. 

Thirdly, is the invention non-obvious? Could a Person Having Ordinary Skill in the Art (PHOSITA) attempt the invention? For example, if the invention was a new toy, a person able to make toys would know from the prior art how to make and use the invention. Prior art determines non-obviousness (35 U.S.C. §103), similar to novelty. Patentable inventions must meet all of these criteria.

For International Patent Applications: As mentioned above, the patentability criteria differs for the International Patent Cooperation Treaty (PCT) applications. The 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 United States criteria for novelty, non-obviousness, and utility.

First International Criteria: Novel: 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.

Important Note: The criteria described here are based on the Patent Cooperation Treaty. Patent applications in the U.S. differ.

Second International Criteria: 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 evaluates inventive step like the the U.S. evaluates the non-obviousness criteria: whether the invention would be obvious to try for a Person Having Ordinary Skill in the Art (PHOSITA). For example, if the invention was a new toy, a person able to make toys would know from the prior art how to make and use the invention. 

Important Note: Prior art determines inventive step, similar to non-obviousness. If a combination of prior art would render the invention obvious to a PHOSITA, the invention is not patentable.

Third International Criteria: 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.

A professional conducts a prior art search to find potential prior art and determine patentability. The prior art is used to evaluate an invention against these eligibility criteria. In other words, a patentability expert conducts a patentability study using prior art.

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 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.

Some Important U.S. Patent 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