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?” First let me give you the short summary. For those that are interested in greater detail, a full explanation will follow below.

At the most basic level, in order for your invention to be patentable, it must be both (1) new and (2) non-obvious. “New” means there is nothing else exactly like it. “Non-obvious” means that there must be protectable differences between your invention and the existing products and patents that would not have been obvious to someone skilled in the relevant area of technology at the time you created the invention. If you believe that the differences in your invention are non-obvious and they would be valuable to protect, you should contact me to set up a time to speak over the phone or in person about the invention and how to proceed.

Now for the more detailed explanation.

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).


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 —

(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 under section 151, or in an application for patent published or deemed published under section 122(b), 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.


In order to qualify for patent protection, the invention must be novel under 35 USC § 102. In order to be novel, the claimed invention must not have been in use, on sale, or otherwise known to the public prior to the applicant’s filing date. In other words, your invention needs to be new.

Exceptions to Absolutely Novelty

35 USC § 102(b) —

(1) Disclosures made 1 year or less before the effective filing date of the claimed invention. — A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if —

(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or

(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

One Year Grace Period

The main exception to the absolute novelty standard is when the public disclosure of the invention was made 1 year or less prior to the filing of the application and was made by the inventor or someone that received the information from the inventor.

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 or joint inventor of carrying out the invention.


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.