Is Your Invention Patentable?
Is Your Invention Patentable?
Protecting intellectual property through patents is pivotal for individuals and businesses seeking to secure innovations, products, and unique business processes. However, not every invention is eligible for patent protection under US law.
If you believe your business has a product or process that could benefit from patent protection, Reinhardt IP offers experienced guidance and representation for inventors and businesses to help you assess the patentability of your innovation and guide you through the patent application process.
Located in Stuart, Florida, Attorney Gerard Reinhardt is licensed to practice in Florida, New York, and Washington, D.C., and is registered with the U.S. Patent & Trademark Office, providing experienced support in developing effective patent protection strategies.
Novelty
A claimed invention must be novel (new) (See 35 USC §102). An invention lacks novelty only if a single piece of prior art (like one specific document or one existing product) describes every single element of the claimed invention. An invention lacks novelty over the prior art if, before its effective filing date, it was:
Patented anywhere in the world;
Described in a "printed publication" (such as a book, scientific article, or website);
In public use;
"On sale"; or,
Otherwise available to the public.
The “on-sale bar” is triggered when two conditions are met:
Commercial Offer for Sale: The invention is the subject of a commercial offer for sale. A "sale" occurs when parties offer or agree to a contract to transfer property rights for payment or a promise of payment.
Ready for Patenting: The invention is sufficiently complete. This can be shown if the invention has been "reduced to practice" (actually built and tested) or if there are drawings or descriptions detailed enough to enable a person skilled in the field to build it.
The One-Year Grace Period
If the inventor (or someone who got the information from the inventor) publicly discloses the invention (such as by publishing a paper, giving a public presentation, or even making a sale), this disclosure will not destroy the invention's novelty, provided the inventor files their patent application within one year of that disclosure. The one-year grace period is generally unique to US patent law. Most other jurisdictions observe “absolute novelty”, meaning that any publication of the complete invention by the inventor prior to filing destroys novelty immediately.
Non-Obviousness
Even if an invention is not identical to anything previously known, a patent cannot be obtained if the differences between the claimed invention and the prior art are such that the invention as a whole would have been obvious to a "person having ordinary skill in the art" (POSA) before the effective filing date. 35 USCS § 103.
To evaluate whether an invention is obvious, courts and patent examiners apply a structured, multi-factor inquiry established by the Supreme Court in Graham v. John Deere Co., 383 U.S. 1 (1966). This analysis relies on four primary factual determinations:
The Scope and Content of the Prior Art: Identifying the existing patents, publications, and public disclosures relevant to the invention.
The Differences Between the Prior Art and the Claims at Issue: Comparing what was already known with the inventor's specific claimed invention to pinpoint what is new.
The Level of Ordinary Skill in the Pertinent Art: Determining the qualifications and technical knowledge of a hypothetical person working in that specific field (the “POSA”).
Secondary Considerations (Objective Indicia of Nonobviousness): Evaluating real-world evidence surrounding the invention, which can include the commercial success of the product, long-felt but unsolved needs in the industry, the failure of others to solve the same problem, and surprising benefits of the claimed invention over the prior art.
Evidence of surprising benefits can be especially persuasive, and applicants should consider building and testing prototypes against prior art embodiments. Including such examples in the patent application can preempt much angst.
The obviousness analysis can seem subjective, and may result in unpredictable determinations of invalidity based on “hindsight”. To address these concerns, courts have devised various tests intended to safeguard the objectivity of the analysis.
The "Suggestion to Combine References" Test
The "teaching, suggestion, or motivation" (TSM) test was developed to require that a party asserting invalidity show some motivation or suggestion to combine prior art teachings. Under this framework, a suggestion or motivation to combine generally arises from:
Express teachings within the prior art references themselves;
The knowledge of those skilled in the art that certain references or disclosures are of special interest or importance in the field; or,
The nature of the problem to be solved, which leads inventors to look to references relating to possible solutions.
The Supreme Court has clarified that an express suggestion to combine prior art is not strictly necessary to establish obviousness.
The "Obvious to Try" Test
An invention may be considered obvious if it was "obvious to try" a particular combination or method. Under this test, when there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions within a POSA's technical grasp, the POSA has good reason to pursue those known options. If this pursuit leads to the anticipated success, the resulting product is likely the result of ordinary skill and common sense rather than innovation, rendering the combination obvious.
The "obvious to try" doctrine may not apply to certain situations, such as:
Inventions directed to a new technology or general approach that merely seems to be a promising field of experimentation, where the prior art provides only general guidance regarding the particular form of the claimed invention or how to achieve it.
Situations where the prior art does not provide a reasonable expectation of success. For example, if the technology is highly unpredictable or if the prior art “teaches away” from the combination, a reasonable expectation of success may be lacking .
Combinations of Known Elements
A common issue is whether combining known, "old" elements is obvious. A patent composed of several elements is not proved obvious merely because each individual element was already known in the prior art. However, if a patent simply unites old elements with no change in their respective functions, yielding only predictable results, the invention is likely obvious.
If a person of ordinary skill in the art can implement a predictable variation of an existing work, or if a known technique used to improve one device would predictably improve a similar device in the same way, the development is considered obvious. The analysis must ask whether the improvement is more than the predictable use of prior art elements according to their established functions.
Applicants should plan for attacks based on nonobviousness. One way to do so is to marshall evidence in support of the Secondary Considerations (see above). The services of a skilled patent attorney will be invaluable in this regard.
As a first-to-file jurisdiction, the scope of the prior art (that will be applied in the novelty and nonobviousness tests) is measured by the date of the filing of the patent application, thus setting up a race to the Patent Office. All other things being equal, sooner is better.
Subject Matter Eligibility
The first substantive section of the US patent statute addresses the kinds of inventions that may be patentable:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
35 USCS § 101.
The courts have seen fit to embellish the statute with further “judicial exceptions” to the statutory classifications. "[L]aws of nature, natural phenomena, and abstract ideas" are not patentable.” Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012). These judicial exceptions have been applied to undermine the patentability of broad swaths of inventions within the fields of software, finance, and medical diagnostics, among others. They can be cited in prosecution before the USPTO (thus preventing the patent to be granted in the first instance), or if the patent is granted, in enforcement (in court or at the PTAB).
The judicial exceptions have been widely criticized as unduly impeding the advancement of affected technologies in the US (e.g., artificial intelligence), as most other countries have no equivalent embargos on subject matter eligibility. Recent bills intended to remedy this situation have repeatedly withered in Congress.
Written Description and Enablement
A patent represents a bargain between the inventor and the people (as represented by the government, the USPTO, and the judiciary). In exchange for the inventor’s public disclosure of her invention (that may have come at considerable effort and expense), the government grants a limited period of time during which the inventor may exclude others from practicing the claimed invention. The term of a utility patent is generally twenty years from the date of filing the nonprovisional (subject to patent term adjustment and extension, and terminal disclaimers). To safeguard the quality of the inventor’s public disclosure of the invention, Congress has imposed several standards for that disclosure in the patent application specification, including those commonly referenced as the “Written Description” and “Enablement” requirements.
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
35 USCS § 112
Written Description
To satisfy the Written Description requirement, the specification must contain a written description of each claim in such full, clear, concise, and exact terms as to show that the inventor was in "possession" of the claimed subject matter as of the filing date.
While working examples or an actual reduction to practice are not strictly required they can be most useful in satisfying this requirement.
Written description is typically found inadequate when an applicant or patentee claims a broad genus of materials or methods based on a highly limited disclosure, effectively presenting a "wish" or "plan" rather than a completed invention. Typical examples of scenarios of failure to satisfy the Written Description requirement include:
Vague functional claims to a genus
Limited embodiment disclosures for broad claims
Reliance on post-filing date knowledge
Enablement
The enablement requirement dictates that the specification of a patent application or granted patent must describe the manner and process of making and using the invention in terms clear enough to enable a person of ordinary skill in the art (POSA) to make and use the full scope of the claimed invention. If a patent claims an entire class of processes, machines, or compositions, the specification must enable the full scope of that class. The standard for enablement is whether a POSA can make and use the invention without "undue experimentation".
The “Wands factors” are applied in the determination of whether experimentation is "undue" (see In re Wands, 858 F.2d 731 (1988):
The quantity of experimentation necessary
The amount of direction or guidance presented in the specification
The presence or absence of working examples
The nature of the invention
The state of the prior art
The relative skill of those in the art
The predictability or unpredictability of the art
The breadth of the claims
Some routine experimentation or screening does not preclude enablement. However, the specification itself rather than the general knowledge of a POSA must supply the novel aspects of the invention.
Typical examples of failure to meet the Enablement requirement include:
Vast chemical/biological genera requiring massive screening
Vague intimations of general ideas
General claims in an unpredictable art with a specification that lacks specific guidance
Contact an Experienced Intellectual Property Attorney to Explore Patent Protection Strategies
To determine whether an invention or innovation qualifies for patent protection, you will need to satisfy strict requirements, including novelty and non-obviousness, to ensure your invention meets the criteria of the US patent statute. Whether you are in the initial stages of developing your invention or preparing for litigation to defend your granted patent, or facing an claim of infringement of a third-party patent, an understanding of the elements of patentability is essential.
At Reinhardt IP, Attorney Gerard Reinhardt offers rapid and frank “first look” evaluations of patentability. He can navigate the conflicting interests of obtaining claims of commercially significant scope, while avoiding the prior art and satisfying the Written Description and Enablement requirements. Located in Stuart, Florida, he is licensed to practice in Florida, New York, Washington, D.C., and by the U.S. Patent & Trademark Office.
