Requirements for a Patent: Utility, Novelty, and Non-obviousness
This content is meant to serve as a quick reference for inventors and technology managers. It is based on frequently asked questions and the basic requirements for patenting inventions. It is not intended to be a comprehensive review of patent law.
35 U.S.C. §101 - Inventions patentable "Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvements thereof, may obtain a patent, therefor, subject to the conditions and requirements of this title."
For an invention to be eligible for a patent, it must fall within one or more of these four classifications and must be directed to patentable subject matter.
To be granted a patent, the conditions and requirements of the title require an invention to be useful (utility), new (novelty), and not an obvious variation of what is known (non-obvious).
35 U.S.C. §101 - Utility The requirement for utility is a requirement for a specific and real world use. An invention must perform its intended purpose. It is not necessary that the invention perform better than existing inventions, but it must be useful in the present day. An increment step towards future invention or discovery will probably not satisfy the requirement.
35 U.S.C. §102 - Novelty The requirement for Novelty means that nothing (just) like it can be found in the prior art. The most damaging prior art often comes from the inventors or owners themselves. This may occur unintentionally as more and more proposals and presentations, believed to be to a limited audience, are published online by various hosting organizations. In the US there is a 1 year grace period after a public disclosure by an inventor in which to file a patent. After 1 year, the public disclosure may be used in a novelty or obviousness rejection, despite that disclosure being made by the inventor. In most countries there is no grace period and a public disclosure becomes prior art as of the date it becomes public.
Public disclosures include: Offers for sale, sales, public use, publications.
Publications include: journal articles, abstracts, handouts at meetings (if made public), advertising materials, web sites, any publication that can be searched for and found.
Before you discuss your invention with a third party, you should, ideally, have a patent application filed. At a minimum, you should have a confidentiality agreement (CDA) or non-disclosure agreement (NDA) signed by the third party. This will prevent your disclosure to the third party from becoming a public disclosure. However, you should be aware that if the third party breaches the NDA and makes the information public, the USPTO can use that disclosure against you as prior art in a later filed patent application.
35 U.S.C. §103 - Non-obviousness A requirement that the invention be non-obvious is a requirement that the invention be more than a logical increment improvement on what is known (35 U.S.C. §103). The USPTO considers obviousness as viewed by a "person of ordinary skill in the art" (POSITA). A POSITA would be the typical scientist or engineer working in the relevant field.
In the most common form of obviousness rejection, the USPTO will cite two or more prior art references, which they will allege, in combination, disclose the invention. The Examiner is required to provide a reason why a POSITA would combine these references to make the invention. This is to prevent the Examiner from using hindsight to reconstruct the invention. Before KSR v Teleflex this reason or motivation had to be explicit in the prior art. However, since the KSR v Teleflex, Examiners can take into account, the "inferences and creative steps that a person of ordinary skill in the art would employ.” Common sense may also be used to support a legal conclusion of obviousness so long as it is explained with sufficient reasoning. This allows the Examiner an amount of subjective determination and can make obviousness rejections difficult to predict. Other forms of obviousness rejections an Examiner may allege include:
- A combination of known prior art elements that retain their respective properties after they have been combined.
- Substituting a known element for an element of a prior art invention.
- Obvious to try. Where there is a finite number of identified predictable solutions to a problem and where perusing one of these solutions would have had a reasonable expectation of success.
Evidence of non-obviousness - A determination of obviousness requires that the result be predictable. A response to an obviousness rejection might include:
- The inventor recognized the problem where others have not. Absence recognition of a problem it would not have been obviousness to combine the references to overcome the problem even if technically possible.
- The combination of elements had an unpredictable result.
- Where there is an accepted understanding in the field that the combination of elements would have been undesirable (teaching away). For example: A modification of a compound that reduced the lipophilicity of the compound was non-obvious, because the prior art taught that lipophilicity was a desirable property. The USPTO has published Guidelines for obviousness determinations
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