Patents are valuable tools for innovators to protect their inventions and maintain competitive advantage. Patents allow an owner to exclude others from making, using, offering for sale, or selling an invention or importing it into a certain jurisdiction. If an entity infringes upon a patent, the owner has the right to pursue legal action.
But before filing a patent, it’s important (imperative, even) to ask: Is my invention patentable?
The answer, of course depends on various legal requirements. While there are several factors that determine that a patent will be granted, we will focus on these key patentability requirements.
Key Patentability Requirements
- The invention must be a “patentable” subject matter
- The invention must be useful
- The invention must be sufficiently described
- The invention must be new
- The invention must be non-obvious
A patentability search focuses on two of these: novelty, and to some extent, non-obviousness. By identifying relevant prior art, this search provides valuable insights before you decide to file a patent application. It won’t address every requirement (like subject matter or utility), but it helps answer one of the most critical questions: Is my invention new (and non-obvious) compared to what’s already out there?
Learn more about Patentability Search services.
What are the requirements for patentability?
Conditions for patentability are summarized in 35 U.S.C. § 101:
“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.”
However, the interpretation of this is generally expanded into four key conditions.
Utility
“A claimed invention must be useful or have a utility that is specific, substantial and credible.”
The invention must have a practical utility and be capable of being manufactured or used in some form of industry. A patent application may be rejected on the ground of lack of utility when the applicant fails to identify or establish the use of an invention.
Enablement requirement
There is also an “enablement requirement” in patents. 35 U.S.C. 112(a) states that: “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…”
In simpler terms, this means that the inventor or patent applicant must sufficiently describe the invention so that someone knowledgeable in the field can understand and replicate the invention based on the information provided. If the invention is vague or lacking in detail, the patent application may be rejected.
A Section 112 rejection (which figures in the graph below) is when a patent examiner assesses the claims to be “indefinite” or vague or ambiguous.
Patentable subject matter
The invention must fall into one of the four statutory categories of patentable subject matter: processes, machines, manufactures, or compositions of matter. Abstract ideas, natural phenomena, and laws of nature are generally not considered patentable subject matter.
This criteria has been shaped by various landmark cases. For example, in Mayo Collaborative Services v. Prometheus Laboratories (2012), the Supreme Court ruled that the relationship between metabolite levels in the blood and drug efficacy simply recites a law of nature combined with routine, conventional steps known and already implemented by those in the field. The court held that in order to make an unpatentable law of nature a patent-eligible application, “one must do more than simply state the law of nature while adding the words “apply it.” Further it cites that “there is a danger that granting patents that tie up their use will inhibit future innovation, a danger that becomes acute when a patented process is no more than a general instruction to “apply the natural law.”
In Alice v. CLS Bank (2014), the Supreme Court held that using intermediaries to facilitate financial transactions, even when implemented on a computer, was not patentable subject matter. The Court reasoned that simply executing an abstract idea on a computer, without introducing any inventive step, does not transform it into a patentable invention. Together with Mayo v. Prometheus, this decision shaped what is now known as the Alice/Mayo test for patent eligibility.
Novelty and non-obviousness: Key areas for a patentability search
While utility and subject matter determine whether an invention can even be considered for a patent, the real challenge often lies in novelty and non-obviousness. These criteria decide whether an invention is new and inventive over what already exists. Because prior art directly impacts both, they are the central focus of a patentability search.
Novelty
The invention must be new, meaning it has not been publicly disclosed in any form anywhere in the world before the filing date of the patent application. This includes any prior public disclosures, including those by the inventor. Rules relating to novelty are further described in Section 102.
Assessing novelty is a crucial step before filing a patent application, and is the main goal of a patentability search or a novelty search.
Non-obviousness
The invention should involve an inventive step that would not have been obvious to a person skilled in the relevant field. This just means that the invention must not be an obvious improvement or combination of existing knowledge or elements.
The USPTO uses an “person having ordinary skill in the art” or PHOSITA standard to determine non-obviousness.
Does a combination of known elements make an invention obvious?
The USPTO notes that: “When considering obviousness of a combination of known elements, the operative question is thus “whether the improvement is more than the predictable use of prior art elements according to their established functions.”
Based on data from the USPTO, most patent rejections come from Section 103, which is the non-obviousness criteria.
Priority date, filing date: Why is timing important?
However, along with these requirements, timing also matters. Timing is critical in the patent application process because it determines what information can be used as prior art against an invention. The sooner an application is filed, the stronger the chance of securing rights before others disclose, publish, or patent similar ideas.
Is there a deadline for patenting an invention?
Yes. In the U.S., an inventor has to file a patent application within one year of the first public disclosure or offer for sale. In case an applicant is unable to fully prepare the patent application, an option is to file a provisional patent application which extends the deadline for another 12 months. Other jurisdictions may not offer the same grace period.
It is important to note that in the U.S., the America Invents Act (AIA) brought significant changes to the patent system, including a shift from the previous “first-to-invent” system to a “first-inventor-to-file” system. The transition to the first-inventor-to-file system under the AIA affects the deadlines for filing a patent application.
1. Pre-AIA (Before March 16, 2013):
- Under the pre-AIA system, the USPTO operated on a “first-to-invent” basis. This means that if there was a dispute over who was the first to invent, the actual date of invention played a role in determining priority.
- There was no strict deadline for filing a patent application under the pre-AIA system, but delay in filing could potentially impact an inventor’s ability to establish an earlier invention date in case of a dispute.
2. AIA (On or After March 16, 2013):
- The AIA, effective on March 16, 2013, introduced the “first-inventor-to-file” system. Under this system, the right to a patent goes to the first inventor to file a patent application rather than the first to invent.
- The AIA retained a one-year grace period for disclosures made by the inventor, but it’s important to note that this grace period applies only to disclosures made by the inventor and not to disclosures made by third parties. This grace period is limited to disclosures made within one year of the filing date.
Knowing these deadlines for filing is critical because it determines what is considered prior art against your invention. Since prior art directly affects whether an invention is novel, it becomes imperative to conduct a prior art or a patentability search before filing.
What is a patentability search?
A patentability search, also known as a novelty search is essentially a review of prior art. Prior art refers to any publicly available information that existed before the filing date of the patent application. This includes previously patented inventions, published patent applications, scientific literature, technical papers, product manuals, and any other relevant disclosures.
Knowledge of the different patentability requirements, and what qualifies as prior art is important before undertaking the patent application process.
When should I conduct a patentability search?
Before patent filing. Conduct a search early on to avoid investing resources in the patent application process for an invention that is already disclosed or patented elsewhere.
Before or during the R&D process. Performing a patentability or a prior art search before investing further resources in research and development helps assess the likelihood of securing patent protection and whether pursuing the invention is worthwhile. At the same time, performing a search during development may uncover prior art that inspires alternative solutions or potential design-arounds.
What is in a patentability search report?
A patentability search report will typically a technical or claims mapping chart that shows the elements or features of your invention matched against potential prior art. This shows how the identified prior art may impact the claims of you invention.
If you are unfamiliar with the process, it is best to consult with a patent attorney, patent agent, or perform a patentability search before investing significant resources in filing a patent application.
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