US Patent Information - Elements of Patentability

Visit the US Patent and Trademark Office U.S. Patent Information Application Procedure Elements of Patentability Types of Patents

The purpose of a United States Patent is to provide the necessary teachings to the public about the invention such that a person who has training in the scientific field correlating to that invention could practice the invention based on those teachings.

In exchange for this instruction, the inventor is granted 20 years of exclusive rights beginning from the date of filing the patent application. These rights legally exclude others from making, using or selling the invention unless such right is granted by the owner of the patent.

An invention is generated when it is conceived and enabled. Conception is the formulation in the inventor's mind of a definite perception of the complete invention. Enablement is the ability to demonstrate that the concept actually works and that the patent application teaches the public trained in that particular field how to make and use the invention. Not all inventions are patentable. In order to be patentable, an invention must be new, useful, and non-obvious.

Novelty

To receive a patent an invention must be:

• New and novel;
• Cannot have previously been known publicly. Cannot have been previously known publicly through publication, display, internet, meetings, or other public forums;
• Cannot have been in use, sold or offered for sale in the United States at least one year prior to the patent application and;
• Cannot have been the subject of a patent issued elsewhere more than one year prior to the filing of a United States patent application.

Utility

An invention must also be useful. At least one specific use for the invention must be stated in the patent application.

Non-Obvious

A patent may not be obtained though the invention is not identically disclosed or described if a person with "ordinary skill in the art" and knowing all there was to know about the prior art, would not be likely to develop the same invention. If the patent office can demonstrate that a person who has "ordinary skill in the art" would have been motivated to combine different elements of the invention based on what was known in the art about those elements to arrive at the same invention, then the invention is considered obvious over the prior art. The courts have determined that "one of ordinary skill in the art" should be taken from the perspective of the "designer of . . . articles of the types presented." In re Nalbandian, 661 F.2d 1214, 1216, 211 USPQ 782, 784 (CCPA 1981); In re Carter, 673 F.2d 1378, 213 USPQ 625 (CCPA 1982).

The Evaluation of novelty, utility and non-obviousness for each application filed is determined by an Examiner in the United States Patent and Trademark Office (USPTO). The Examiner conducts a patent search to find similar inventive work known as "prior art". The submitted invention must be distinguishable from all prior art and must be determined workable based on the teachings in the prior art.