1.7 Criteria for Patenting

Can I Patent That?

Before reading this section, please watch the overview video below covering what you can and cannot patent. You can’t patent an idea (like an idea for a better mousetrap), only an application of that idea in a practical invention. Novelty, utility, and non-obviousness—the holy trinity of patents.

Now that you’ve learned what can be patented and what cannot, we will next examine the criteria for determining if a patent-eligible invention actually merits one. These criteria center around three concepts mentioned in the previous section and enumerated in the Patent Act: novelty, utility, and non- obviousness.^xlix

Let’s discuss these three concepts in greater detail.

Novelty

The requirement in Sections 101 and 102 of the Patent Act for novelty in an invention means that to qualify for a patent, a machine, manufacture, process, or composition of matter must not have been previously described or known. Specifically, it must not have been patented, described in an unpublished or published patent application, explained in a printed publication such as an article or technical paper, or publicly known prior to the filing date of the new patent application. In addition, it must not have been published, used in public, or offered for sale by the applicant or their colleagues more than 12 months prior to the filing of a patent application.

Figure 1.18 Patent for dog ear protectors designed to keep a dog's hair clean while eating. (creadit: USPTO via uspto.gov / Public domain)

If any of the above is true of an invention, it is said to have been “anticipated” and cannot be patented. These novelty requirements exist whether the “prior art”—the catchall term for any previous patent, publication, or use—is domestic or foreign.

This does not mean, of course, that your faster-than-light warp drive is unpatentable simply because it was envisioned in a general way in episodes of Star Trek and its successors’ television shows, and in many Star Trek books.

“It is not enough that an invention be suggested by the literature,” explains the eminent New York University scholar Arthur R. Miller and his coauthor Michael H. Davis’ in their textbook for law students.^l “Nor is it sufficient that the literature made the invention inevitable—that bears on the question of non-obviousness. The test, with one major exception, is whether enough of the invention has been disclosed to enable a person skilled in the applicable art to duplicate the product or process.”

That one exception, writes Miller and Davis, is public use of the invention. In that case, even a limited disclosure that does not reveal the secrets of the invention can still foreclose a patent if the public use of it “discloses the invention’s benefits.”

Prior Art Must Be Enabling

In the era of social media, the previously mentioned requirements could pose a novelty barrier if not handled properly.

For instance, if you develop a new watch that displays information from an iPhone, and then disclose it on the crowdsourced funding site Kickstarter in order to raise capital from thousands of small-time investors, then you will probably want to file a patent application prior to, or certainly no later than a year after, your disclosure of the benefits of your watch to the public.

But in the absence of such public use, disclosure in prior art must be substantial and enabling to be disqualifying.

As patent attorney and writer of the widely read IP Watchdog blog Gene Quinn explains:

“What Star Trek teaches is the idea of warp speed wit some suggested articulation of how it could be achieved. But that’s not informing enough. Someone could not make and use the device based on what is taught in Star Trek. So if you actually figure out how to make a faster-than-light warp drive work—and can describe it sufficiently so that someone skilled in the science of space propulsion could build it—then yes, it would be patentable.” Take heart, Star Trek fans!

Utility

As the Star Trek example suggests, the novelty issue can also touch on the question of utility—the second patentability criteria. Utility has a special meaning in patent law, which is simply that an invention must function and be of some benefit qualitatively—although no minimum quantum of benefit is necessary. The landscape of business is littered with companies that have invented not very useful or necessary products. But these may satisfy the requirement for utility if at least someone would find them useful.

But snake oil medicines and other products that do not work in any meaningful way will not meet the requirement for utility. “The inventor of an ineffective drug may not obtain a patent merely because he convinces gullible patients that it has a non-existent curative effect,” Miller and Davis note. “It is not so much that it lacks a minimum quantum of benefit (the patients may find it subjectively useful), but it is, instead, that it has an impermissible fraudulent quality.”

Figure 1.19 An ad for Worner's Famous Rattlesnake Oil, circa 1914. (credit: Wormer's Famous Rattlesnake Oil via Wikimedia Commons / Public domain)

Even when no fraud is intended, the utility of a product or process must be demonstrate in a patent application—not presumed, but affirmatively demonstrated. Simply put, the thing or the method you have invented must actually work as it is intended and claimed to work.

“Forget Star Trek for a moment,” says Quinn. “On a more mundane level, the USPTO used to deny patents for methods and compositions for re-growing hair. These were seen as lacking utility because re-growing hair was believed to be impossible. Finally, someone was able to prove that his method and composition actually re-grew hair on a bald scalp. The patent examiners withdrew their rejection, and patents for such products have issued ever since.”

Interestingly, Quinn explains, since the earlier patent applications on hair-growing products didn’t describe anything that actually worked, they could not be used under the novelty bar to block later patent applications for hair-growing products that did work.

Non-Obviousness

An invention may be new. It may also have utility. But to meet the criteria for a patent, it must also be non-obvious under Section 103 of the Patent Act.

Let’s now dig deeper into the requirements of the concept of non-obviousness.

Requirements

The requirement for non-obviousness may be illustrated with a fanciful example. If the number 4 were an invented product rather than a mathematical symbol, then even though the number 4 had never been invented before and was thus novel, it would still not be patentable. That’s because someone skilled in the art could have put 2 and 2 together to come up with it.

But to offer a more practical example, say you invent a wheeled cart to move office supplies more easily between departments. If this is the first such wheeled office cart in history, you can get a patent for it. But if you then decide, “Hey, why not put those wheels on a chair?” you won’t get a patent for it. That’s because combining two such widely-known and available elements would be obvious to anyone skilled in the art of office furniture design.

But things are not so obvious when it comes to inventing a camera phone. Even though it’s composed of well-known and widely-available components, combining the two did satisfy the requirement for non-obviousness because it became more than the sum of its parts and met a large and previously-unfilled need in the marketplace. The millions of people who take selfies everyday is certainly proof of that.

There are various ways of presenting evidence that your invention satisfies the non-obvious requirement for patentability. You can demonstrate that the existing elements of your invention, although individually already known, yield an unexpected or hidden result. Or you can show that your invention, although composed of well- known and widely available components, when combined satisfies a long-felt but previously unfilled need in the marketplace, thus indicating its non-obviousness. Both of these demonstrations of non-obviousness apply to the camera phone example above.

The One-Click Patent

Some people criticized the so-called “one-click” patent granted by the USPTO to Amazon.com in 1999 for Amazon’s system enabling customers to buy an item with a single click of the mouse—with the payment information needed to complete the purchase already having been entered by the user previously.

They contended that although Amazon might have been the first company to employ the process, it was an obvious and inevitable iteration of already- existing mouse-clicking procedures for making a purchase online. The patent office reexamined the patent, however, and in 2007 upheld the validity and the bulk of its major claims.

It is important to note that it’s an invention’s function that is often examined to determine obviousness. “Even though it may be obvious that a certain object can be constructed in a certain way, its utility and novelty may lie in its functional use, not its construction,” write Miller and Davis. “Therefore, the prior art must be used to determine whether the invention’s new and useful function, not its construction, is non-obvious.”

During the first half of the twentieth century, the courts often saw an invention as obvious when it lacked a “flash of genius” and was merely an incremental advance over the state of the art as opposed to what they imagined would be a “revolutionary” breakthrough discovery. But that subjective interpretation of inventiveness was overturned by the 1952 Patent Act, which codified a more objective standard—namely, that whether an invention is developed through laborious trial and error or through a eureka flash-of-genius moment has no bearing on its obviousness or non-obviousness.

Overcoming Patent Hurdles

Taken together, the three patenting criteria—novelty, utility, and non-obviousness—function like the obstacles in an Olympic hurdles race. The utility hurdle is easiest to overcome. The novelty hurdle less so. But by far, the highest hurdle facing inventors is non-obviousness.

“The vast majority of all rejections at the patent office are for obviousness reasons,” explains retired Chief Judge Paul Michel of the U.S. Court of Appeals for the Federal Circuit, the main court that handles patent appeals. “And it’s not very difficult to see why. Given the millions of patented inventions over the decades, the tens of millions of past and current products on the market, it’s not all that easy to come up with an invention that is not only novel but also truly non-obvious to someone with ordinary skill in the state of the art.”

Many believe that the criteria for patenting weakened in the late 1990s and early 2000s, and that as a result, too many poor-quality patents were issued. To the extent this problem exists, one of its likeliest causes is the fivefold increase in patent applications that has taken place over the last 30 years without a commensurate increase in USPTO funding, resources, and capabilities.

Despite these challenges, the USPTO has made substantial progress in the last five years in improving examiner training and tools, reducing the backlog of pending applications, and strengthening the quality of the examination process for patent applications. This progress has been made despite oftentimes-unclear or contradictory patentability rulings from the courts.

Patent quality is essential to the maintenance of public confidence in the patent system. After all, when property rights (either real or intellectual) are seen as overbroad, ill-defined, or illegitimate, individuals and businesses are more willing to trespass on them.