Are You a Legal Professional?

Patent Eligibility Requirements FAQ

Before applying for a patent, you research your invention's patentability and whether the invention meets the patent eligibility requirements of the USPTO.

What are the basic requirements for a patent?

In the United States, there are five elements of patent eligibility. The United States Patent and Trademark Office (USPTO) states:

  1. In order for your invention to qualify for patent eligibility, it must cover subject matter that Congress has defined as patentable. The USPTO defines patentable subject matter as any "new and useful" process, machine, manufacture or composition of matter. Machines or processes are patentable subject matter, but the laws of nature are not. So, you can patent a machine for sorting packages, but you can't get a patent for sunlight.
  2. The invention must have a "utility," or in other words, be useful. Note that this requirement is only for utility patents (see next question, below).
  3. The invention must be "novel," or new.
  4. The invention must be "non-obvious," meaning its use or function can't be something that is simply the next logical step of an already patented invention. Much of the argument between the USPTO and patent applicants revolves around the issue of non-obviousness.
  5. The invention must not have been "disclosed" to the public prior to the application for the patent. For example, if you've written an article describing the invention before you apply for the patent, the USPTO may deny the application because you've already disclosed the patent and therefore it's public knowledge.

What are the different types of patents?

There are three general categories of patents. They are:

  1. Utility patents
  2. Design patents
  3. Plant patents

Utility patents are what most people associated with patents and are the type most frequently granted. Utility patents cover:

  • Processes—business processes, computer software, engineering methods, etc.
  • Machines—anything that performs a function
  • Articles of manufacture—a catchall category that covers anything manufactured
  • Composition of matter—pharmaceuticals, chemical compounds, artificial genetic creations

A utility patent is the most powerful form of protection, but also the most difficult to attain (see requirements below), and last 20 years from the date of filing.

Design patents protect non-functional, purely ornamental designs. For design patents, applicants don't have to prove "utility," step 3 above. In fact, the design is required to be non-functional. Design patents are more easily issued, last only 14 years, and offer more limited protection than a utility patent. For example, another design has to have a virtually identical design to infringe upon a patented design.

Plant patents protect asexually reproduced plants and sexually reproduced plant seeds. These typically arise from scientific experiments combining different plant species to create new plants and plant seeds and are the least frequently granted patents. Plant patents last 17 years.

What is the basic process of receiving a patent?

Think of the patent process as stepping through three doors. The first is the largest door and the easiest to step through, the second is a smaller door that's more difficult, and the third is a tiny door that is extremely difficult to squeeze through.

In this analogy, door #1 is having patentable subject matter; door #2 is novelty (or "newness" of the invention); and door #3 is "non-obviousness" (whether the invention is enough of a departure from previously awarded patents). If your invention can fit through each door, the patent will be granted.

What is patentable subject matter?

Patentable subject matter is any new and useful process, machine, article of manufacture or composition of matter. Following is a non-exhaustive sample of patentable subject matter:

  • Business processes
  • Machines and electronics
  • Fabrics and fabric designs
  • Sporting equipment
  • Medicines
  • Computer hardware
  • Computer software programs that have a "useful, concrete and tangible" result
  • Man-made bacteria (by contrast, naturally occurring organisms are not patentable)
  • Human genes that are identified and isolated are patentable because they are not naturally occurring when isolated.
  • Business methods (e.g., FedEx's method of delivering packages overnight)

What does it mean for an invention to be "novel"?

To be novel, an invention must not be known or used by anyone else in the U.S. and must not be patented or described in a printed publication in this or a foreign country before the date of the patent application. Basically, if there's another invention out there before your patent application that incorporates all the same elements as your invention, then your invention is not novel and the patent will be denied.

Additionally, the USPTO has a rule that states that if the invention of described in a printed publication in the U.S. or a foreign country, or in public use or on sale in the U.S. more than one year prior to the date of the patent application, the patent will be denied. So, if any of these three things happen—1) on sale, 2) public use, or 3) printed publication one year prior to the application date, you can't apply for a patent.

As a result of the "one-year rule," there is a possibility that you could destroy the novelty of your own invention by delaying the application. For example, if you have someone manufacture or use your invention to determine if it's patent worthy and end up applying for after a year has gone by, the application may be denied as not being novel. If you believe this could be a problem you should consult a patent attorney because there are different rules regarding "experimental" uses of inventions that could get you around the one year rule.

How is something determined to be "non-obvious"?

The non-obviousness test is the most difficult obstacle in the patent review process. The question the USPTO asks is: knowing what's out there, is the invention an obvious step? If the invention is simply a combination of several different prior patents, it may be deemed an obvious next step, and therefore denied.

The USPTO will look at "prior art" (a term meaning the state of technological knowledge before the patent application to determine whether the invention is "obvious to a person having ordinary skill in the art." There must be an inventive leap. In other words, the invention must have a distance between it and the prior art.

In addition to examining prior art, the USPTO also looks to secondary considerations to shed light on the level of obviousness at the time of the invention. For example, if your invention is a commercial success, that may indicate that there was nothing else in the market like your invention and that others failed to achieve the same result. Or if there was a long period of time between the relevant prior art and the patent at issue, it may indicate that the patent is not obvious, otherwise there would have been other similar products that tried to fill the void.

Non-obviousness is the most hotly contested portion of the patent review process because it's the most subjective. One patent examiner may look at an invention and think it's merely the next logical step up from prior art whereas another examiner may look at the same prior art and think that the invention shows an inventive leap and is therefore not obvious.

What qualifies an invention as having "utility" or being useful?

All utility patents must demonstrate that they are useful now, not just potentially useful, or at least have a sound theoretical basis for being useful. For example, you may be issued a patent for a process that speeds a manufacturing line based on past processes that have proven successful, but may not be awarded a patent for a drug the effectiveness of which has no scientific backing. Remember that only utility patent applicants are required to prove the usefulness of the invention.

Next Steps
Contact a qualified business attorney to help you identify
how to best protect your business' intellectual property.
(e.g., Chicago, IL or 60611)

Help Me Find a Do-It-Yourself Solution