The U.S. Patent Act has one of the broadest standards for what is patentable of all countries. When you are filing a non-provisional or provisional patent application, you will need to bear in mind the requirements of patentability. To be patentable, the invention must be statutory, novel, useful, and nonobvious. Certain requirements, such as novelty and non-obviousness, will require you to conduct a preliminary patent search and retain an attorney or agent to search comprehensively.
“Statutory” simply refers to the question of whether the invention involves subject matter that can be patented. Among the subject matter that can be patented are processes, machines, manufactured articles, and compositions of matter.
Certain inventions are not patentable under the Patent Act and would not meet the requirement that the invention be “statutory.” Examples of clearly non-statutory inventions are data structures, nonfunctional descriptive material like books or music, electromagnetic signals, laws of nature, and other abstract ideas.
Under 35 U.S.C. § 102, in order for an invention to be patentable, it must be new and not the subject of a public disclosure more than a year before your patent application filing date. When has a “public disclosure” been made? This is a complicated analysis. Generally, an invention is not novel if it was known to the public before you invented it, it was described in a publication more than a year before you filed, or it was used or sold publicly more than one year before you file.
This means that there is only a one-year period after the first public disclosure or sale during which a patent application can be filed, and your failure to file within this period can act as a statutory bar to obtaining a patent. The clock can start running even if all you did was explain the invention to your friends.
A patent examiner will examine the prior art and look at all previous patents for the same or highly similar inventions. When all the features of your invention are found in a single earlier patent, the patent will be rejected for lacking novelty. In order to make sure an invention is novel, inventors should conduct a patent search before filing. The purpose of this requirement is to stop prior art from being patented again.
The patent law specifies that the subject matter must be “useful.” This traditionally meant three things: practical utility, operability, and beneficial utility. However, the question of whether something has a beneficial use, something that is considered not immoral or deceptive, has not recently barred applications. Generally, a process, machine, or composition must operate to perform an intended purpose in the real world to meet this requirement.
As with the novelty requirement, an inventor must conduct a patent search and study the prior art to predict whether an examiner will find his or her invention non-obvious. The examiner will decide whether the invention would be considered obvious to somebody with ordinary skill in the art. This can be a difficult analysis, involving a review of previous patents of inventions similar to the invention for which you seek a patent.
Next, the patent examiner will try to combine two or more patents to find features in a combination of the previous patents. When the examiner succeeds at finding a combination, the examiner is likely to find the invention is an obvious combination. Simple changes to earlier products that are not patentable include substituting materials or changing sizes.