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Can I patent my invention?

When an inventor contacts me about an invention, one of the first questions is always, “can I patent my invention?”

What inventions can be patented?

In order to be patented, an invention must meet the requirements of 35 U.S.C. §§ 101, 102, 103 and 112.  Short summaries of the sections 101, 102, 103 and 112 are provided below.

35 U.S.C. § 101 – Inventions Patentable

35 USC § 101:  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.

Patentable Subject Matter

There are three types of patents that protect three types of inventions; (1) utility patents, (2) design patents and (3) plant patents.

  • Utility patents protect any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.  Utility patents protect the functional aspects of your invention.
  • Design patents protect any visual ornamental characteristics embodied in, or applied to, an article of manufacture.  Design patents protect the ornamental, non-functional aspects of your invention.
  • Plant patents protect any new variety of plant, other than a tuber propagated plant or a plant found in an uncultivated state.

In layman’s terms, an invention is patent-eligible when it is: a device, composition or process (utility patent); the visual appearance of a manufactured article (design patent); or a new variety of plant (plant patent).

Utility

The requirement that the invention must be useful is not as substantial hurdle for most patent applications.  The patent office does not evaluate the quality of the invention; the invention must merely be functional as described in the patent.  A perpetual motion machine is a common example of an invention that would not meet the utility requirement.

35 U.S.C. § 102 – Conditions for patentability; novelty and loss of right to patent

35 USC § 102(a):  A person shall be entitled to a patent unless the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent.

35 USC § 102(b): A person shall be entitled to a patent unless the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States.

Novelty

In order to qualify for patent protection, the invention must be novel under 35 USC § 102(a).  In order to be novel, the claimed invention must not have been (1) known or used by others in this country, or (2) patented or described in a printed publication in this or another country, prior to the applicant’s invention date.

Statutory Bars to Patentability

Further, under 35 USC § 102(b), the invention must not have been in public use or on sale in this country, or patented or described in a printed publication in this or another country, more than one year prior to the date of the application for a U.S. patent.

In other words, in order to be patentable under section 102: (a) the claimed subject matter must have been new at the time of the invention; and (b) at the time the patent application is filed, the invention must not have been in public use, publicly disclosed or on sale for more than one year.

35 U.S.C. § 103 – Conditions for patentability; non-obvious subject matter

35 USC § 103(a):  A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.

Despite being novel, an invention may not be patentable if it is determined the claimed subject matter is obvious in light of the prior art.  An invention is obvious when a combination of prior art references can be shown to disclose, teach or suggest the claimed invention.  For example, in a patent application having claim limitations A, B, C and D, one prior art reference may disclose A, B and C and a second prior art reference may disclose element D with some teaching or suggestion that it can be used in combination with elements A, B and C.

Because nearly all inventions are a combination of existing elements and technology, the nonobviousness determination plays an important role in the prosecution of nearly every patent application.

35 U.S.C. § 112 – Specification

35 USC § 112(a):  The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.

Enablement

Under section 112, a patent application will only be allowed to issue as a patent if the written disclosure is enabling.  In order to be an enabling disclosure, the patent application must teach one skilled in the art how to make and/or use the full scope of the claimed invention without “undue experimentation.”  Undue experimentation is determined by evaluating all of the relevant factors, including; the breadth of the claims; the nature of the invention; the state of the prior art; the level of one of ordinary skill; the level of predictability in the art; the amount of direction provided by the inventor; the existence of working examples; and the quantity of experimentation needed to make or use the invention based on the content of the disclosure.  MPEP 2164.01(a).  In general terms, the patent application itself must disclose enough details and specifics that someone else in the industry will be able to use your disclosure to copy your invention.

Best Mode

In addition to the enablement requirement, the written description must also include a description of the inventor’s preferred embodiment, otherwise known as the best mode.  The best mode requirement is in place to prevent applicants from generally describing the invention, but trying to keep secret their preferred embodiment.  The patent rights are granted to the inventor(s) in exchange for a disclosure of the invention and withholding the best mode would negate some of the public benefit of the patent process.

If you would like to discuss whether you can patent your invention with an experienced patent attorney, contact me to schedule a free initial consultation.