Lawyers and Settlements

Intellectual Property: Patents

What is Patentable?

Not every invention is patentable in the United States.

First the invention must be of proper subject matter. Generally “anything under the sun made by a person” is proper subject for a patent. More precisely, an invention must fall within one or more of the following categories. Patents are granted for new, non-obvious, useful inventions or discoveries of:
  1. Processes,
  2. Machines,
  3. Manufactures,
  4. Compositions of matter,
  5. New uses of known processes, machines, manufactures or compositions of matter,
  6. Improvements in any of the above,
  7. Asexually reproduced plants, and
  8. Designs (Design patents last 14 years and are for ornamental designs for an article of manufacture.)
In general, the Patent and Trademark Office is liberal in the subject matter of patents and in claim terminology it will accept, provided the invention is man-made and the claims are presented in a definite fashion so that readers of the patent can tell what infringes and what does not infringe a given claim. For example, over the years patents have been granted on: automobile parking structures, drive-in theaters, slot machines, a host of computer applications, useful gene fragments, genetically altered organisms and recently even methods of doing business. The Supreme Court has even said that "anything under the sun created by man" is proper subject matter for a patent.

Perhaps a better notion is to list the things that are not patentable. Unpatentable subject matter includes: business forms, perpetual motion machines, promotional advertising schemes, intended results or desired goals, functions (without apparatus), nebulous concepts or ideas, mathematical formulas, and laws of nature (as distinguished from applications of such laws). Basically, desired functions or problems are not patentable. It is the specific thing that solves the problem or the specific method that performs the function that can be patented, not the goal or result.

Regardless of the type of invention for which a patent is sought, there are three general requirements for patentability which are critically important. A patentable invention must be new, useful and UNOBVIOUS. The new and useful requirements are easily understood and fairly easily met. An invention does not have to be better to be useful, different in a non-obvious way is enough. The non-obviousness requirement is more difficult. The section of the statute involved (35 U.S. C. § 103) states it this way:
"A patent may not be obtained ... 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."
To determine the "obviousness" of a discovery, one must first identify the prior art. Locating the most pertinent prior art is not easy in view of widespread technological activity around the world. The increasing publication of patents on the internet has made it much easier for the public to access this information, but as a practical matter, one can still never be positively certain of having located the most pertinent prior art in view of the abundance of technical knowledge and publications. However, any determination of patentability must be based upon some known prior art garnered from whatever sources the determiner uses. With the known prior art in mind, patentability is determined by asking whether or not the invention would have been obvious to a person of ordinary skill in the field, who is aware of that prior art. To be patentable, an invention must differ from the prior art in a way that is not just an obvious change or addition. In considering the question, people may disagree on the abilities expected of the fictitious "person of ordinary skill," or on the content of the prior art, or on the conclusion that the imaginary person would reach. Any such disagreement is likely to result in a disagreement on the patentability of the invention in question. It remains an open question until decided by the court of last resort and, even then, if new prior art is found to be closer than the previously considered prior art a settled conclusion of nonbviousness may become unsettled.

Other general requirements for patentability are that the invention must not be frivolous or contrary to public policy or to the public welfare. This is, in the first case, to deter inventors from filing for patents just to get a patent certificate on something so silly or petty as to not be worth the effort the Patent Office must spend to examine and process it, although every doubt will be resolved in favor of the inventor as an invention's worth is often so speculative anyway. In the second case, the Patent Office is a branch of public Government and thus sometimes will refuse to issue a patent that is contrary to public policy (for example, an improved apparatus used only for snorting cocaine or a device useful only to prevent being caught when committing rape.)

Who May Obtain a Patent?

Only the first and original inventors (or those asserting such an inventor's rights) can properly obtain a U.S. patent. A person who merely recognizes the commercial merits of an existing product, or who discovers it in an ancient document or in a foreign country may not properly receive a patent; he must have invented it himself. A corporation or business organization may not pursue patent protection on a development independently of the inventor. However, it is common practice for employed inventors to assign patent rights to their employers. Many employers make assignment a condition of employment.

The law provides for joint inventors if two or more inventors together made the invention. Problems may arise in this situation but the problems can usually be solved. Specifically, unless there is an agreement or assignment of the patent to one of the inventors or to a third party, each inventor has the right to exploit the invention with no duty to account to the other inventor or inventors for his actions. This is true regardless of the percentage of the patent any one joint inventor may own. Moreover, none of the joint inventors has the right to exclude the others from practicing the patented invention due to the power of the other joint inventor or inventors to use the invention and grant licenses to others. Clearly then, the rights and obligations of joint inventors should be defined by an agreement or the patent should be assigned to a single entity.

Who's on first, What's on second? Occasionally, it happens that two or more independent inventors come up with the same invention at about the same time. So, who gets the patent? In foreign countries the first one to apply for the patent gets the patent. In the US, it is more complex. The Patent and Trademark Office has a mechanism to resolve the issue, which is an "interference" proceeding. These are very expensive and complex proceedings which are best handled by patent attorneys experienced in such proceedings. In such a proceeding the question of who is the first, true and original inventor is determined, for only that inventor (or group of inventors) may obtain the patent. In the US, it is not necessarily the inventor who first filed a patent application who obtains the patent. (It should be noted here that in all foreign countries, the first true inventor(s) to file DO get the patent. The USA is unique in allowing later filers to prove they are the first inventor.) While the first applicant has a distinct advantage in the contest, he may lose out to another inventor who has records that prove him to be the earlier inventor, diligent in his development effort. Determining the winner of an interference involves resolution of complex factual and legal issues. For present purposes, suffice it to say that witnessed records covering the development of an invention are important, as is diligent activity and an early filing date for the patent application. This brings up the importance of timing in obtaining a patent, particularly if foreign coverage will be desired.

Information on this page was supplied with permission of Bruce E. Burdick.

Patents | When May One Apply for a Patent?