Ing. Mariana I. Vernieri
U.S. Patent Agent
Registered with the USPTO
Registration No. 77275
+1 (561) 809-2760
As you can see, the aspects to consider in determining whether a given invention is patentable in the United States are many and very complex. For this reason, it is advisable that a Patent Agent conduct a patentability study professionally, in order to consider all of them and make a responsible decision based on that. At Patentes USA we offer you a complete patentability report for only $600. It is a fundamental first step toward moving forward with the process of obtaining a patent on solid ground.
What can be patented in the U.S.?
Just as we strongly recommend ordering a Patentability Study to decide whether it is worth proceeding with the project of patenting your invention, it is also important that you as an inventor become familiar with the different aspects that can negatively impact your chances of applying for and obtaining a patent in the U.S. This way, you yourself will be able to tell whether there is a compelling reason to abandon the idea. The main elements to keep in mind are:
1.
Patents vs. Trademarks and Copyright
A patent may not be the ideal type of Intellectual Property protection for your idea
Obviously, not everything is patentable. Patents are intended to protect the rights of inventors of machines, products, processes and compositions of matter, as well as industrial designs and certain plants.
These are not the only types of Intellectual Property protection that exist. For example, certain things must be protected through a trademark, or through copyright
2.
Standing to apply
Not just anyone has the right to apply for a patent in the U.S.
Both the inventor and those persons or companies to whom the inventor has assigned their rights are entitled to apply for a patent. If the inventor has died, their heirs may begin the process. If the inventor is legally incapacitated, the application could be made by their legal representative (guardian or conservator). It may also happen that the inventor does not want to apply for the patent, or cannot be located. These types of cases are covered by the law and there are special provisions for them. Where there are several inventors, the application should be filed jointly by all of them.
3.
Patentable Subject Matter
In the United States, only certain types of things can be patented
Basically, you can only patent something that can be considered a process, article of manufacture, machine or composition of matter, that is, in general terms, things invented by humans and the processes to produce them. To be patentable, an invention must also be "Useful". This means both having a real practical utility and actually working to fulfill that utility.
Laws of nature, products of nature, and abstract ideas, on the other hand, are not patentable in themselves, but inventions that include them in a non-preemptive way together with other patentable components may be.
4.
Novelty
The idea must be novel. This means that no one must have made it public before
If the claimed invention had previously been patented, naming another inventor, it cannot be patented. The same applies if it had been described in a printed publication, or been in public use, on sale or offered for sale, or otherwise available to the public before the effective filing date of the application. Patent law provides certain exceptions to these prohibitions. In particular, an exception may apply to a "disclosure made 1 year or less before the effective filing date of the claimed invention", but only if "the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor".
5.
Non-obviousness
The invention must not be obvious to a person of ordinary skill in the art
Under U.S. patent law, an invention must be "Non-obvious" to be patentable. The definition of "non-obviousness" is specific: if a person of ordinary skill in the art (POSITA) were given the same problem to solve -as of the date the application was filed- could they arrive at the same solution by combining only elements already existing in the prior art? Patent rejections for obviousness are the most common. However, the actual criteria for determining obviousness are sophisticated and in many cases the dividing line is not clear. For this reason, it is highly recommended to request a Patentability Study if in doubt.
COMBINATION OF REFERENCES
Even if an alleged invention is not exactly anticipated by a single piece of prior art (as in the case of the rejections for lack of novelty detailed above), it may turn out to be obvious from the combination of two or more references. For this to happen there must be a MOTIVATION OR SUGGESTION to combine them in this way, either in the references themselves or in the general knowledge of the public and common sense. This suggestion does not necessarily have to have been conceived for the same purpose for which the inventor devised it. In addition, there must be a REASONABLE EXPECTATION OF SUCCESS when combining the references, and the combined references must teach or suggest ALL THE LIMITATIONS of the claimed invention for it to be considered obvious.
THE INVENTOR
An invention, and the right to patent it, belongs in principle to the individual(s) who actually carried out the inventive activity. Of course, no one can patent something invented by someone else, even if it is novel and the true inventor is not interested in patenting it, unless the inventor explicitly assigns their rights. In the case of an assignment, the assignee acquires from the inventor the right to apply for the patent.
PROCESSES
A process refers to a way of carrying out an activity. It may be the manufacture of a product, the modification of the physical properties of matter for a useful purpose, or procedures involving the transmission and processing of information, algorithms, materials and activities, generally through a sequence of defined steps.
PRIOR PATENTS
If there is already a patent on the invention, in any country, granted before the application is filed, this rules out the possibility of obtaining a new patent on the same invention. The same applies if the invention is described in a patent application that is considered published in the U.S. and that names another inventor.
