What is Patentable?

Patentable subject matter can include “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, . . .” that is novel, non- obvious, and useful. See 35 U.S.C. §§ 101-103. These terms do not always mean what they seem to imply in the patent context. Accordingly, an invention must meet these three requirements as interpreted by the U.S. Patent and Trademark Office and the Federal Courts.


There is no requirement that an invention be better than the prior art; however, there is a requirement that the patentable subject matter have utility (i.e., are operable) under 35 U.S.C. § 101. Often, particularly in the mechanical and chemical fields, a showing that an invention performs its described function will be sufficient to satisfy Section 101. Recently, the law has been in a state of transition pursuant to U.S. Supreme Court decisions in 2013 and 2014. A growing number of inventions — particularly those in the business method (e.g., Internet processes) and diagnostic areas — have experienced increased resistance from the U.S. Patent and Trademark Office under Section 101 as a direct result of those decisions. Responding to a Section 101 rejection often involves keeping apprised of the latest developments of internal U.S. Patent and Trademark Office regulations (or “Guidance”) and Federal Circuit case law. 

Requirement of Novelty

To qualify as a novel or new invention, the subject matter cannot be described in a prior patent, a publication or an article, and cannot be in public use or on sale (including an offer for sale) for more than one year prior to filing the patent application. See 35 U.S.C. § 102. If all of the elements of a patent claim are expressly or inherently disclosed by a prior art document, then the claim is said to be anticipated, i.e., lacks novelty.

Requirement of Non Obviousness

In addition to novelty, the invention must be non-obvious. This is probably the most common rejection issued by the U.S. Patent and Trademark Office. The test used by the U.S. Patent and Trademark Office and the Federal Courts for obviousness is whether the differences between the claimed invention and the prior art would have been obvious to a person having ordinary skill in the art to which the subject matter pertains at the time the application is filed. See 35 U.S.C. § 103. Secondary considerations such as unexpected results, industry praise, copying, and a long unresolved need in the art are also considered, where applicable. Accordingly, knowledge of relevant patent cases pertaining to obviousness is generally required in order to present a proper response to a Patent Examiner’s rejection of a patent application based upon this ground.

Patent Search

Although not a requirement, individuals who believe they have a patentable invention should have a patentability search performed to determine if any “prior art” (such as, for example, prior patents and patent application publications) have issued which may prevent the issuance of a patent or limit the scope of its claims, which define the metes and bounds of protection. Generally, the cost of a patent search is quite small when compared to that of the legal and filing fees associated with the preparation, filing, and prosecution of a patent application. Accordingly, it is considered wise to incur the patent search costs prior to investing larger sums engaging in the patent application process. Also, patent search results generally help the drafter of any patent application focus their efforts on what appears to be patentable subject matter and aids in developing a reasonable strategy for achieving the goals of the inventor or owner of the patent rights. There are other types of patent searches, such as, but not limited to, Invalidity and Right-to-Use searches. Accordingly, if you wish to speak with a member of our firm or have a question regarding patent searches and searching, please feel free to contact us by e-mail, or contact us by telephone or snail mail.

First-To-File System

In March 2013, the United States transitioned from a first-to-invent system to a first-to-file system. Essentially, under the new system, if two inventors independently develop the same invention and file respective patent applications, the earlier-filed application has priority, even if the inventor of the later-filed application invented first.

In addition to priority, there are other factors that warrant the early filing of a patent application, including the potential for loss of rights when the invention is publicly disclosed, on sale (whether publicly or not), or published more than a year before the inventor file his or her application. In this respect, many inventors dash any opportunity they may have at receiving an enforceable patent or benefiting from their invention merely by disclosing, selling, or offering to sell their invention to others before filing a patent application. Therefore, it is always wise to first discuss any invention that you may have with a trained professional such as a patent attorney who can advise you on how best to protect your invention, including entering into non-disclosure agreements (NDAs) where needed. This initial consultation (often at little or no cost to the inventor) may insure that the inventor’s rights to the invention are not inadvertently jeopardized and that the inventor will achieve the greatest level of protection suitable to his or her situation.

Patent Rights

Once a patent is issued by the U.S. Patent and Trademark Office, it has a presumption of validity. An accused infringer (i.e., a person or entity allegedly trespassing on the inventor’s rights) must establish invalidity by clear and convincing evidence. Therefore, as an initial matter, a patent owner going to court to stop someone from making, using, selling, or importing the patented subject matter without his or her authorization does not have to prove that his or her patent is not invalid. However, an inventor and/or patent owner is required to demonstrate by a preponderance of the evidence that the opposing party’s product or process constitutes an unauthorized use of the patent to prevail in court. This involves demonstrating that the opposing party is utilizing the subject matter recited in the claims of the patent.

Potential patent owners and litigants should be aware that even if infringement is proved by a preponderance of the evidence, the opposing party may attack the validity of the patent grant itself without attacking ownership of the particular patent. One method that an opposing party may use is to demonstrate that the patent at issue is in some way defective or improperly issued, for example, because the claimed invention is neither novel nor non-obvious, because the claims are directed to patent-ineligible subject matter, or because the patent application fails to adequately describe and enable the invention. Accordingly, patent infringement litigation is generally costly and can take years to resolve.

Following the expiration of a patent (generally 20 years from the effective filing date), the information disclosed in the patent is no longer the exclusive property of the inventor, and becomes available to the public through the disclosure in the patent. This limitation required by law constitutes a quid pro quo based upon the public policy of the United States and most nations of the world to encourage and promote the development of science and industry by granting a monopoly to an inventor for a limited period of time as a reward for disclosing his or her work to the public. In exchange for the limited monopoly, the patent is given a limited lifetime and the information disclosed therein becomes available to the public upon issuance of the patent grant as a means of encouraging further technological advancement by others. The inventor’s rights remain protected, but others are given the opportunity to build on the invention and create other patentable subject matter, often characterized as improvement inventions. After the expiration of the patent, the public is permitted to use the patented subject matter free of charge without the need for authorization from or payment to the patent holder. 

Utility and Design Patents: What is the Difference?

In the United States, there are three types of patents: utility, design, and plant. As the terms indicate, a utility patent may be available for inventions having utility and a design patent may be available for inventions that contain an ornamental feature that is patentable. Plant patents are not as common as utility or design patents.

Prior to June 8, 1995, the life span of a utility patent was 17 years from the date of issuance of the patent. However, U.S. patent laws changed on June 8, 1995 and as a result a utility patent with an effective filing date of June 8, 1995 or later expires 20 years from the earliest effective filing date of the patent application, subject to patent term extensions. Patents issued from design applications filed on or after May 13, 2015 have a term of 15 years from the date of grant. This change, as well as other more intricate changes to the patent laws, may have a profound impact upon a patentable invention. Accordingly, care should be taken when determining how to go about protecting one’s rights to an invention to ensure maximum benefit from any utility and/or design patent.

Unlike a utility patent, a design patent exclusively protects the ornamental aspects of an object, but not the utility of the object. Therefore, the requirements of a design patent are different than those of a utility patent. A design patent requires novelty, originality, and non-obviousness for other than functional or utilitarian purpose. It is possible to receive both a design patent and a utility patent for the same object; however, both types of patents can protect different aspects of the invention.

Foreign Patents

Foreign and international patent matters are managed either through the Patent Cooperation Treaty (PCT) International Authorities or by the respective national or regional patent offices established by each country or region. Importantly, many foreign countries have a requirement of “absolute novelty,” which means that the application must be filed in a patent office before the first public disclosure of an invention. There is no one-year grace period for filing a foreign patent and it is calculated from the earliest effective filing date. For further information on patent protection in the United States and foreign countries, please contact us by e-mail, or contact us by snail mail or telephone and we will advise you on further specifics or provide contact information for our foreign associates who specialize in patent law for a given country.