Is my invention patentable – is it a process, machine, manufacture, or composition of matter? Is it a patent ineligible abstract idea, law of nature, or natural phenomenon? Is it significantly more than an abstract idea with additional elements?
Only the following 4 types of inventions are patentable:
- Composition of Matter
Is it still possible to patent after publication? Was the invention published or made publicly available more than 1 year ago?
In many countries, including China, and European Union countries, invention is not patentable once it has been published. Therefore, one must file for patent before publication in these countries. Filing international patent in multiple countries can be done using PCT application.
In United States, the inventor or the co-inventor can publish, sale or use the invention publicly up to 1 year before the filing date of the patent. If somebody else publishes, uses or sales the invention after the inventor has publicly done so or after anyway getting the invention from one of the inventors, the invention can still be patented, as long as such publication or public use happened within 1 year of the patent filing date.
Can prior inventions be easily combined, substituted, tried in obvious way, or applied using known techniques to produce predictable results? Does that make my invention obvious and not patentable?
An invention is not patentable if it can be created by easily combining, substituting or trying prior inventions in obvious way. In such cases the invention is obvious to a person skilled in the related science and therefore is not patentable.
Is the invention obvious (nonobviousness)
Following facts are considered for the evaluation of obviousness (Graham v. John Deere Co., 383 U.S. 1 (1966)):
- Determining the scope and content of the prior art;
- Ascertaining the differences between the claimed invention and the prior art;
- Resolving the level of ordinary skill in the art; and
- Evaluating any objective evidence of nonobviousness (i.e., so-called “secondary considerations”).
1. Determining the scope and content of the prior art
The question in design cases is not whether the references sought to be combined are in analogous arts in the mechanical sense, but whether they are so related that the appearance of certain ornamental features in one would suggest the application of those features to the other. (In re Glavas, 230 F.2d 447 (CCPA 1956))
Thus, if the problem is merely one of giving an attractive appearance to a surface, it is immaterial whether the surface in question is that of wall paper, an oven door, or a piece of crockery. In this case, any prior art reference which discloses substantially the same surface ornamentation would be considered analogous art.
On the other hand, when the proposed combination of references involves material modifications of the basic form of one article in view of another, the nature of the article involved is a definite factor in determining whether the proposed change involves [patentable] invention. In this case, the nature of the articles involved must also be considered
2. Differences Between the Prior Art and the Claimed Design
The overall appearance of the design that must be considered (In re Leslie, 547 F.2d 116 (CCPA 1977)). The mere fact that there are differences between a design and the prior art is not alone sufficient (In re Lamb, 286 F.2d 610 (CCPA 1961)). For example, differenced inconsequential from a design viewpoint are not considered.
3. Level of Ordinary Skill in the Art
The invention has to be obvious to a designer having “ordinary skill in the art” of the subject matter. The “level of ordinary skill in the art” is the perspective of the “designer of . . . articles of the types presented.” (35 U.S.C. 103, In re Nalbandian, 661 F.2d 1214 (CCPA 1981); In re Carter, 673 F.2d 1378 (CCPA 1982).
4. Objective Evidence of Nonobviousness (Secondary Considerations)
Secondary considerations, such as commercial success and copying of the design by others, are relevant to the evaluation of obviousness of a design claim (MRC Innovations, Inc. v. Hunter Mfg., LLP, 747 F.3d 1326 (Fed. Cir. 2014); Crocs Inc. v. International Trade Commission, 598 F.3d 1294 (Fed. Cir. 2010)).
Ask questions about patentability of your invention
Is my invention patentable? The invention is patentable only if it falls in one of these 4 categories: (1) a process; (2) a machine or device; (3) a composition of two or more matters; and (4) a tangible article resulting from manufacturing process. Ask more…
Is my invention too abstract? If the invention is not an abstract idea, a formula, a law of nature, an abstract process, a discovery in pure science, a natural phenomenon, a product of nature, or a similar abstract idea or item of nature then it is not patentable. Ask more…
Questions about patent filing and prosecution process
What is the patent process? Getting a patent involves the following steps (Ask more…)
- Check if the idea is patentable. Also check if somebody has already publicly disclosed the invention. This requires searching existing patents and other publications.
- Draft the patent application. This is the most difficult part, as it requires a lot of skill, particularly to draft the legally enforceable claims part of the patent application.
- File the patent application with Patent office, like US Patent and Trademark Office (USPTO).
- Respond to Patent office rejections and objects in timely manner. Patent examiner most of the times comes back with rejects to patent application, usually because the invention is obvious (35 U.S.C. §103) or already publicly disclosed (35 U.S.C. §102). Patent application is abandoned if those rejections are not responded with proper legal arguments.
- In the end, if the patent application is granted, pay the patent issue fee to the patent office. After issue fee is paid, the patent will be officially issued and you would have enforceable patent rights.
Questions about provisional patent application
Should I file a provisional patent application? File a provisional patent application through an experienced attorney only if you need to expedite the process by some days, not to save money. Ask more…
Does provisional patent application cost less? In the long run provisional patent application costs more, because a non-provisional patent application has to be filed within 1 year of the provisional patent application. The fees and expenses paid for provisional patent application becomes an additional expense. Ask more…
Can provisional patent application cause problems? A quickly filed provisional patent application without thorough review can cause problem later when filing non-provisional application, as somethings required disclosures, description, examples and drawings are not included. A thorough review of the invention after searching prior inventions and considering the legal claims can reveal required disclosures, description, examples and drawings. If these are not included in a provisional patent application, but later included in a non-provisional patent application they are considered new subject matter, and can only get the filing date of the non-provisional patent, which is typically about 1 year after the provisional patent filing date. Ask more…
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- Is it patentable, an abstract idea, a formula, or a product of nature?
- Is it public or obvious? Is it publicly available, or prior ideas be easily combined, substituted, or tried in obvious way?
- Should I file provisional or non-provisional application?
- Should I file utility or design application? What is the filing process?
- How about rejections, objections, reexamination, or appeal?
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The patent attorney has helped us with two patents. What impressed us the most is his expertise in both technicality and law. Our previous perception of working with patent lawyers was that they may do a good job in filing and negotiating, but when it comes to drafting and especially the iterations of revisions, it takes a lot of time and effort to explain to them and reach an agreement. In this case, he has the technical background comparable to that of the inventors, so we only needed the extent of details sufficient to communicate with a co-inventor/colleague. In particular, in the process of drafting, he was clear about the key point of each claim and how the system works, and able to make the modifications to satisfy the filing requirements. When later we had to revise the claims a few times, he always managed to make the best trade-off possible that addressed the patent examiner’s challenges, while not hurting the scope and value of the invention. With the complexity already time-consuming for us (as required by filing a patent), he could even maintain a turnaround of a day or just several hours.
Moreover, his helpfulness was also reflected in the sense that he made us convinced and understood the rationale of each decision point, instead of just making the changes on his own, so that we as the inventors can be synced and participate to achieve a better outcome. In the long term, what we’ve learned from him, the legal aspects and best practices, will facilitate our future research and production of inventions, as we were not well aware of these before.
Overall, during the whole process of both patents, we never felt that we were trying to “use” a patent lawyer, but just interacting with another co-inventor, in terms of: ownership, hard work, knowledge and ease of communication.
L. Zhao (Carleton University, Canada) and M. Mannan (Concordia University, Canada)