Introduction
Whether you are an established company, or a startup in the scientific and engineering innovation space, it’s likely that you have heard the word “patent” at least once. Why are patents so prevalent in this space you may ask? A patent allows an owner or inventor to exercise 20 years of market exclusivity. This means, the patent holder is the only individual or entity who can make, use, market, or sell a given invention from the date the patent application is filed with the United States Patent and Trademark Office (USPTO). While this does mean the actual term of the patent post issuance will run for less than 20 years, it allows companies and individuals to recoup expenses associated with research and development, and subsequently profit from their novel contribution to the world. The remainder of this post will highlight the key statutory requirements needed to obtain a patent.
Three Statutory Requirements to Obtain a Patent
35 U.S.C. 101 – The Utility Requirement
The first of the three requirements deals with the utility of the invention. That means, the invention must have some usefulness and actually function for its intended purpose. To illustrate this, you cannot patent a cardboard box and claim it is a new type of gumball machine, because the cardboard box is not actually functional as a gumball machine.
Coupled in Section 101 is also what are known as judicial exceptions to patentable subject matter. All this means is you cannot patent laws of nature, natural phenomena, or abstract ideas. In other words, Newton could not patent his theory of gravity, a newly discovered bacterium cannot be patented as it exists in nature, and Einstein could not patent his universe-changing equation E=mc2.
35 U.S.C. 102 – Novelty & Prior Art
The second requirement can initially be confusing due to the several exceptions that exist. This should roughly break down how to manage Section 102. First an invention must be novel. This means the invention must not have been created or conceived previously. Evidence of previous creation can be indicated by what is known as “prior art.” Confusion particularly arises in determining what is prior art and how the exceptions apply. Prior art is any publication, patent, pending patent application, a sale, or an offer for sale (a “Disclosure”). First, anything that an inventor or owner publishes on their own invention can be considered as prior art. If, however, the Disclosure was within one year of filing the application, a rejection on prior art can be overcome. If the Disclosure is by another person at any point before your filing (i.e., independent creation), you will likely face a prior art rejection that cannot be overcome. In essence, if you are the first to invent and disclose something, be quick to file within the 1 year timeline. If you were not the first to invent or disclose something, it is unlikely the rejection can be overcome unless there is a showing that the third-party disclosure was a result of your initial disclosure or was a disclosure in the course of a joint research agreement.
35 U.S.C. 103 – Nonobviousness
Finally, nonobviousness is the most complicated of the three. To provide an overview, nonobvious means the invention should not be obvious to make or create to a person with ordinary skill in the art. I.e., if the invention is in the mechanical engineering art, the invention should not be something that would be obvious to make, create, or try with a high degree of success to a mechanical engineer. This is a very skeletal explanation of nonobviousness and there are several considerations prosecutors at the USPTO and examiners in practice make when making and overcoming rejections. To learn more about nonobviousness, one should understand the Graham factors and seven KSR rationales. Since neither can be easily explained, and often requires experience in a particular scientific or engineering art, it is best for a business to engage with either a scientific specialist, or a registered USPTO agent or attorney.
What in The World is Section 112?
Changing gears from patent eligibility to patentability, 35 U.S.C. Section 112 describes how an invention must be described to the USPTO. A patent application must be accompanied by what is known as a “specification” that includes at least one claim- that is, the subject matter which you seek to protect. The written description of the specification provides an overview of the invention and must be fully enabling and must disclose the best mode of creating and using the invention. To further break this down, enablement essentially requires that claimed to be disclosed in the written description of the invention. To illustrate this: if you claim process X to make widget Y, there must be a description of process X and widget Y. Finally, the best mode is distinct from the written description and enablement requirement as it strictly deals with describing how to specifically make and use the invention without a reader of the patent application needing to conduct undue experimentation. Essentially, the application must be complete in describing how to use and make the invention, without requiring a reader to take on research of their own to understand the invention and its uses.
Strict adherence to Section 112 can ensure a streamlined and lower-cost prosecution process by avoiding a constant back and forth between a company and the USPTO.
Conclusion
Patent law is a hyper-complex area of the law that often requires highly specialized attorneys and scientific advisors. Even for highly established companies such as Merck, Siemens, Dassault Systems, and IBM patent law remains complex and requires the assistance of several experts. It is important to note that this blog only provides a very high level overview of the intricacies involved in patent law. It is always best practice to retain an attorney or agent that is registered with the USPTO to handle your patent matters.
Sources:
- AIA 35 U.S.C. 101.
- AIA 35 U.S.C. 102.
- AIA 35 U.S.C. 103.
- AIA 35 U.S.C. 112.
- https://www.uspto.gov/web/offices/pac/mpep/mpep-2100.pdf
- https://boldip.com/what-do-i-need-decision-to-file-a-patent-bp/
- https://plusfirm.com/what-is-the-test-for-obviousness/#:~:text=Under%20the%20Graham%20Test%2C%20in,skill%20in%20the%20pertinent%20art%3B
- https://www.federalregister.gov/documents/2010/09/01/2010-21646/examination-guidelines-update-developments-in-the-obviousness-inquiry-after-ksr-vteleflex
Image Sources:
- https://www.findlaw.com/hirealawyer/choosing-the-right-lawyer/patents.html
- https://www.greyb.com/blog/prior-art-search/
- https://boldip.com/what-do-i-need-decision-to-file-a-patent-bp/
Hi Mo,
Great post! I really liked that you included examples to illustrate the concepts (the cardboard box cannot be patented as a gumball machine, for example). I think this is a very complex area of law and I have a hard time understanding it, but you did a nice job of breaking down the three requirements and explained them in a clear way. I think it would have been helpful for the reader if you hyperlinked the USPTO website, similar to how you did for the Graham factors.
Good job!
Hi Mo,
Awesome post! Patent law is complex — great job at making it simplified and attractive in this post. Using basic examples helps illustrate the concept, which someone like me with only a superficial understanding of Patent law could appreciate. I also think that the small note about consulting a registered attorney is crucial to the success of the applicant. Overall, I think your post is well-written, super informative, and most importantly, digestible for your audience. I think the readers could have benefitted from a light discussion about a real-world example. I know we’re up against a word count but mention of a case or discussion of a patent for an everyday item would’ve aided your illustration of the concepts. In any case, I commend your expertise! Nicely done!
Hey Mo, really great post. To me, trying to wrap one’s mind around patent law is a daunting endeavor, yet you’ve managed to expertly disseminate the most important information on this complex area of law to your audience in a concise, informative, and highly readable post. As a visual learner, I really appreciate your descriptive examples, as these really helped me to understand the law, both in theory and in operation. This post is an excellent introduction to the laws surrounding patents for any entrepreneurial reader, well done.