The four legal issues (or requirements) for a utility patent are: (1) the invention falls within one of the classes described in the patent statute; (2) the invention is useful; (3) the invention is novel; and (4) the invention is nonobvious. If you can meet each one of these requirements, you’ll be on your way to obtaining a U.S. patent. (For more information on what’s in a regular patent application, check this article).
Statutory Classes
In order to qualify for utility patent rights, an invention or discovery must fall within one of the statutory classes provided in (i.e., a useful process, machine, manufacture or composition of matter or any new and useful improvement of such items.) These broad categories may include, as established by the Supreme Court, "anything under the sun that is made by man" provided that it meets the statutory requirements. It is possible that an invention or discovery may overlap two categories.
Invention is Useful
Usefulness is generally the easiest requirement to establish because most inventions are created or discovered for some useful purpose. The Patent and Trademark Office may reject an application if the use has not been established (e.g., a drug whose usefulness has not yet been demonstrated) or if the only use would be illegal or deceptive. For example, a man invented a method of putting spots on tobacco plants to make the plants resemble tobacco plants of higher quality. The process did not improve the plants or change the quality of the tobacco. The sole purpose was to deceive purchasers. The federal courts invalidated this patent. Similarly an invention to counterfeit American currency would not be able to acquire patent protection unless the inventor could demonstrate some alternative non-counterfeiting use of the device. The Atomic Energy Act of 1954 prohibits the patenting of any atomic weapon.
Novelty and Prior Art
An invention must be novel. It must differ in some way from the prior art (i.e., the publicly known or existing knowledge in the field of the invention.) When assessing the prior art, the patent examiner or courts will consider the following:
- prior patents that issued more than one year before the filing date of the patent or before the date of invention
- prior publications having a publication date more than one year before the filing date of the patent or before the date of invention
- U.S. Patents that have a filing date prior to the date of invention of the patent at issue
- anything in public use or on sale in U.S. more than one year before the filing date of the patent at issue
- anything that was publicly known or used by others in this country before the date of invention of the patent in suit; and
- anything that was made or built in this country by another person before the date of invention of the patent in suit, where the thing made or built was not abandoned, suppressed or concealed.
The requirement for novelty (set forth in 35 U.S.C. § 102) provides that a patent will not be issued if the invention was known or used by others in this country or patented or described in a printed publication in this or a foreign country before the date of invention. In addition, the U.S. Patent and Trademark Office will not consider an invention to be novel if the application for the patent is made more than one year after sale, public disclosure, use, offer of sale in the United States or is patented anywhere in the world. This is known as the one year rule or on sale bar and is explained in more detail later in this chapter.
Nonobviousness
This requirement demands an inquiry into whether persons working in the field would consider the invention obvious. That is, is the invention sufficiently different from what had been used or previously described. Would the device be obvious to a person having ordinary skill in the invention’s field of science.
It is possible to create a device that is novel but is not nonobvious. For example, an inventor created a method of clearing manure from a barn without using human labor. The system combined a water tank, flushing system, and a sloping barn floor. No prior device had performed this function so the invention was novel. However, the Supreme Court held that the combination of a water tank and a sloping barn floor was not patentable because it was obvious. If the Patent and Trademark Office rejects the application for nonobviousness, the applicant can attempt to prove that the invention produces a result that is not obvious.
In 1966, the U.S. Supreme Court grappled with the definition of nonobviousness in the case of Graham v. John Deere Co. The court established a three part analysis, inquiring into the following: (1) What is the scope and content of the prior art to which the invention pertains? (2) What are the differences between the prior art and the claims at issue? and (3) What is the level of ordinary skill in the pertinent art? Other courts have added subsequent factors such as: Has the invention enjoyed commercial success? Has there been a need in industry for the invention? Have others tried but failed to achieve the same result? Did the inventor do what others said could not be done? Have other copied the invention? Has the invention been praised by others in the field?
Limitations: The One-Year Bar/The On Sale Bar
An inventor is barred from acquiring patent protection if the application is filed more than one year from the date of sale, use, offer of sale of the invention in the United States (the on sale bar) or one year from the date of a printed publication (in which the invention is described) in any country.
Limitations: Ownership Issues
The initial owner of the patent is the inventor and the application must be made in the name of the inventor. However, employment laws and employment contracts may require transfer of ownership of inventions from employees to their employers. In addition, state shop right rules may affect employee ownership. Joint inventors can establish their rights and obligations with a joint ownership agreement. Patent rights may be transferred by assignments or licenses. Intentional or grossly negligent errors in patent applications about ownership may, in some cases, cause a patent to be invalidated.
