In a rapidly evolving technology landscape, protecting intellectual property becomes more critical than ever. Patents are a valuable tool for inventors and businesses to protect their innovations and maintain a 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 a patent, the owner has the right to pursue legal action.
However, securing a patent involves meeting a specific set of criteria and a rigorous examination process. In this guide, we’ll cover the various patentability requirements, and how a patentability search and opinion can provide valuable insights before filing a patent application.
Conditions for patentability is 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 five key conditions.
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 “ordinary person having ordinary skill in the art” 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.
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 above) is when a patent examiner assesses the claims to be “indefinite” or vague or ambiguous.
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.
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.
In order to assess the novelty of an invention, or the likelihood of obtaining a patent, it is important to do the necessary research before filing a patent application. While a patentability search is typically conducted before filing a patent, organizations also perform this at a much earlier stage of their R&D.
Patenting your invention? Inquire about a patentability search.
A patentability search can assess the novelty of an invention. This is an important step before filing for a patent application, or even before investing significant resources in research and development. A patentability search can provide answers regarding the novelty of an invention primarily because novelty is a more clear-cut, objective question.
However, the non-obviousness criteria is a little bit more complex, and can depend largely on the patent examiner. See how the highest USPTO rejections for the past years are Section 103 rejections (non-obviousness).
While a patentability search cannot fully answer the non-obviousness criteria, the search results can help provide more information by presenting prior art that may be found in a combination of sources.
Inquire about a patentability search here.
A patentability search report would typically list all the relevant prior art that disclose similar elements to your invention.
An ideal patentability search report will include a technical mapping of the elements of your invention vs the claims, specifications, drawings of the prior art found. It may contain summaries and analysis of how the elements are similar or different, oftentimes the degree of relevance or similarity is also indicated.
A patentability opinion on the other hand, is a legal opinion given by a qualified patent attorney, which analyzes the features of your invention vis a vis the prior art found in a patentability search report. It assesses the likelihood of obtaining a patent in light of the invention’s novelty, non-obviousness, and utility.
While a patentability opinion provides valuable insights, it also does not guarantee success in obtaining a patent for an invention.
Patentability searches are of course not an exact science, but it helps to have a structured process to document your results. Here are some basic steps that you could follow when getting started with your search.
Now that you have narrowed down your search, you may retrieve all the patents and patent applications under the selected CPC.
Take note of the patents and applications that are the most similar to your invention.
Pay attention to the claims, specifications (description), embodiments (drawings).
Citations (both by the applicant and patent examiner) in the prior art are just as important as this can lead you to more sources that may be even outside your technology area
4. Broaden your search
If your search did not yield results from the concerned jurisdiction or patent office, consider expanding your search to foreign patents and patent applications.
Searching foreign patents allows you to expand the scope and increase the likelihood of finding relevant prior art.
5. Hire a patent search provider
If you’re new to prior art searching, it may be advisable to enlist the help of expert patent researchers, especially those that are subject matter experts in the field of your invention.
Performing a patentability search requires reviewing a ton of technical documents from various sources. It requires hours and hours of search optimization and review to cover your bases. Hiring a team of researchers is advisable especially if you have a lot of claims to be searched and reviewed. For a patentability search to be successful, it must be approached from legal and technical fronts.
Parola Analytics offers patentability searches that are led and reviewed by U.S.-registered patent attorneys and patent agents. This kind of research with both technical and legal approaches can be a cost-effective way to get started on your patentability search, and later on, your patent application.
For more information regarding a patentability search about your invention, you may book a free consultation here.
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