Return on Innovation®


What Does ‘Patentable’ Mean? Understanding the Basics of Patent Law

April 15, 2024

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 U.S.C. §101.

                        Congress has spoken – in 35 U.S.Code §101, to be exact.  The United States Congress hands down the overarching guidelines as to what is and what is not eligible for patent protection – or what is and is not “patentable”.  The United States Patent and Trademark Office (“USPTO”) is the governmental body that implements Congress’ laws on this topic.  So what does the USPTO say about what is and is not patentable?  Let’s take a look at their guidelines in plain English.

                        As we have seen in a previous post, you clearly must actually have an invention.  This means that your invention must be more than simply an idea:  It must be reduced to practice, either through your own building and use of the invention (or if you have paid someone else to build it at your direction for your use), which is actual reduction to practice or by the submission of a full patent application to the USPTO that contains all of the details and pictures necessary to enable someone skilled in the field to which the invention applies to build and use the invention, which is constructive reduction to practice.  Without enough details to enable someone to build and use the invention, your patent application will be denied, as your invention will not be deemed to be useful.

                        In addition to being able to fully use or enable someone else to build and use your invention, your invention must be novel.  That is, your invention must not have been previously disclosed into the public domain by anyone else.  If John Smith wrote an article about how to make a theoretical car that could also prepare toast, but nobody has yet built the toast-making car, John Smith’s article would still preclude anyone else from obtaining a patent on that invention, as the invention would no longer be “novel” due to his disclosure of the details of the invention in the article.  These disclosures will be considered by the USPTO’s Patent Examiner during the examination process of any patent application.  Disclosures that are related to your invention will be deemed to be prior art, and this prior art will all be considered by the Examiner during examination.  If any disclosures of your entire invention are made in the prior art, your invention will be held not to be patentable.  (Note:  We will take a deeper look at prior art in future articles, so more info on this broad topic will arrive in due course.)

                        Perhaps the trickiest of all of the USPTO’s basic introductory criteria for “patentability” is the requirement that an invention is only eligible for patent protection so long as it is non-obvious.  This is an extremely fact-specific inquiry and it is possible for reasonable minds to differ on this issue.  If the invention is a logical next step to someone skilled in the particular art to which your invention is directed, it will be considered legally “obvious” and thus, not eligible for patent protection.  This is ascertained from the prior art discussed above (and in future articles).  One piece of prior art that does not disclose ALL of the elements of an invention does not mean that this prior art is irrelevant to the inquiry here; quite the contrary, in fact, as multiple pieces of prior art may disclose separate elements of an invention and therefore make the invention both non-novel AND obvious.  So it is definitely important to do your proverbial “homework” prior to seriously contemplating the filing of any patent application.

                        If an invention clears these preliminary hurdles and the inventor can show that his or her invention is novel, useful, and non-obvious, as briefly outlined here, then the inventor has taken the first steps on the path to obtaining a patent on the invention.