What is Patentable and can be Patented?

The patent law specifies the general field of subject matter that can be patented and the conditions under which a patent may be obtained.

In the language of the statute, any person who “invents or discovers any new and useful processmachinemanufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent,” [emphasis added] subject to the conditions and requirements of the law. The word “process” is defined by law as a process, act or method, and primarily includes industrial or technical processes. The term “machine” used in the statute needs no explanation. The term “manufacture” refers to articles which are made, and includes all manufactured articles. The term “composition of matter” relates to chemical compositions and may include mixtures of ingredients as well as new chemical compounds. These classes of subject matter taken together include practically everything which made by human beings and the processes for making the products.

The patent law specifies that the subject matter must be “useful.” The term “useful” in this connection refers to the condition that the subject matter has a useful purpose and also includes operativeness, that is, a machine which will not operate to perform the intended purpose would not be called useful, and therefore would not be granted a patent.

The Atomic Energy Act of 1954 excludes the patenting of inventions useful solely in the utilization of special nuclear material or atomic energy for atomic weapons.

Interpretations of the statute by the courts have defined the limits of the field of subject matter which can be patented, thus it has been held that the laws of nature, physical phenomena and abstract ideas are not patentable subject matter. A patent cannot be obtained upon a mere idea or suggestion. The patent is granted upon the new machine, manufacture, etc., as stated above, and not upon the idea or suggestion of the new machine. A completed description of the actual machine or other subject matter for which a paten is sought is required.

Novelty and Unobviousness

The United States patent laws require that an invention be novel and unobvious in order to gain patent protection. Thus, the Patent Office will examine each application for novelty and unobviousness. For example, in order for an invention to be novel:

  • The invention must not be known or used by anyone in this country, and must not be patented or described in a printed publication in this or any foreign country before the invention was made by the applicant; or
  • The invention must not have been patented or described in a printed publication in this or a foreign country, or be in public use or for sale in this country more than one year prior to the date of the application by the applicant in the United States; or
  • The invention must not have been described in an issued United States patent before the date the invention was made by the applicant.

“Made by the applicant” (as defined by court cases) varies in definition but generally refers to the first date that an applicant can prove that he/she conceived (not made!) a working model of the invention. It is also important to note that you will forfeit your right to obtain a patent if you do not file an application within one year of the first public use or sale of the invention (offers for sale are considered a sale under patent laws). In this regard, it would be to your advantage to keep your invention a trade secret, and only disclose it to others on a “need to know” basis. To help prove the date of conception of your idea it may be helpful to keep a journal containing dated descriptions and drawings of your idea which includes signatures of close associates attesting that they have reviewed your idea on a certain date.

In addition to novelty, a patent will not be granted if the differences between your invention and the prior art (i.e., prior patents already issued) are such that the idea surrounding the invention, as a whole, would have been “obvious” to a person having “ordinary skill in the art” at the time you conceive your invention. Again, the courts have defined a person having “ordinary skill in the art” differently, but it generally refers to someone who has general knowledge of the technological area to which your invention might apply.

Scope of Patent Protection

Some patents are broad (and thus very strong) and some are narrow (and thus very weak). Those patents which are broad usually prevail in patent infringement suits. Those patents which are narrow usually offer no substantial patent protection, and can be justified by other means. The amount of legal and technical expertise expended in drafting a broad patent is usually greater than that involved in obtaining a narrow patent.

The ultimate value of a patent is influenced by various factors but the foundation for patent protection lies in the commercial value of the invention. While many broad patents do not recoup the cost of obtaining patent protection, narrow patents may be worth the initial cost because the narrow feature it protects is of great commercial value, or because the feature has a commercially essential secondary value.

Secondary values may evolve from different business objectives. For example, a patent that offers little protection can still be valuable because it:

  • may serve as an advertising tool to announce a new product that is protected by the patent laws;
  • may support an exclusive dealership contract which may be an antitrust violation in the absence of a patent;
  • may support a manner of doing business to which a tax reduction may apply; or
  • may provide a defense against a charge of patent infringement by another party.

Interestingly, many narrow patents have earned substantial royalties during their lifetime. Narrow patents also discourage competition for a period of time while a competitor investigates the strength and coverage of an issued patent, thus giving the patent owner the marketing advantage of a head-start on competition in an already crowded market.

As you can see, the decision to pursue patent protection should be based not only upon the patentability of your invention, but also upon the commercial potential of your invention, the type of patent protection available and the potential uses to which it may apply.

Please click Here to find out how to go about patenting your idea and the costs involved.