Is My Idea Patentable?

Even if you have a new idea or innovated use that may a meet the above criteria, there are many statutory requirements that must be met before a patent is granted. By statute, 35 U.S.C. §102 states a person shall be entitled to a patent unless:

• the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or

• the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or

• the inventor has abandoned the invention, or

• the invention was first patented or caused to be patented, or was the subject of an inventor's certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country certificate filed more than twelve months before the filing of the application in the United States, or

• the invention was described in a patent granted on an application for patent by another inventor filed in the United States before the invention thereof by the applicant for patent, or on an international application by another who has fulfilled the requirements of paragraphs (1), (2), and (4) of section 371(c) of this title before the invention thereof by applicant for patent, or the inventor did not invent the subject matter sought to be patented, or before the applicant’s invention thereof the invention was made in this country by another who had not abandoned, suppressed, or concealed it. In determining priority of invention there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.

The patent laws impose the following additional requirements for patentability:

• the invention must be any new and useful process, machine, [article of] manufacture, or composition of matter, or any new and useful improvement thereof, pursuant to 35 U.S.C. § 101, thus, no matter how novel or how valuable an “invention” may be, it cannot be patented if it does not fall under one of the aforementioned classes; and

• the invention must be non-obvious to a person of ordinary skill in the art.

The latter requirement is the most difficult test to meet. The Patent Statute sets forth this requirement as follows:

35 U.S.C. §103. CONDITIONS FOR PATENTABILITY: NON-OBVIOUS SUBJECT MATTER. 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.

The United States Supreme Court has set forth the following test or procedure to be used in applying the above statutory requirement for non-obviousness:

• the scope and content of the prior art are to be determined

• differences between the prior art and the invention at issue are to be ascertained

• a level of ordinary skill in the pertinent art is resolved

• against this background, the obviousness or non-obviousness of the subject matter is determined

In addition to all of this, the Supreme Court has further stated that secondary considerations may also be considered indicia of obviousness or non-obviousness. These can include: commercial success of the invention;
long felt but unsolved needs by the marketplace; failure of others in attempting to solve the same problem;
state-of-the-art teaching in a different direction/solution; unexpected results achieved by the invention; and
copying by others in the marketplace.