Patent It Yourself - PDF Archive

ChaPter 5 | Is It PATENTABLE? | 95
Here we deal with the specific subject of what’s legally
patentable and what’s not. Over many decades, both
Congress and the courts have hammered out a series of
laws and accompanying rules of interpretation that the
PTO and the courts (and hence you) must use to separate
the patentable wheat from the unpatentable chaff. All of
these laws and rules are introduced in this chapter and then
referred to repeatedly in later chapters.
Because an understanding of the material in this chapter
is crucial to the rest of the book and to an understanding of
patents in general, I urge you to relax and read it carefully.
A. Patentability Compared to
Commercial Viability
If you assessed the commercial potential of your invention,
as suggested in Chapter 4, and your invention received a
passing grade, your next question probably is, “Can I get a
patent on it?” The answer to this question can be crucial,
since you’re likely to have a difficult time commercially
exploiting an invention that isn’t patentable, despite its
commercial feasibility. Although you may be able to realize
value from an invention by selling it to a manufacturer
as a trade secret (a difficult sale to make!), or by selling it
yourself using a clever trademark, or (in some cases) by
relying on copyright protection and unfair competition
laws (as explained in Chapter 1), such approaches are
usually inferior to the broad offensive rights that a patent
offers. Concisely put, if your invention fails to pass the tests
of this chapter, reconsider its commercial prospects and
whether other areas of intellectual property will provide
adequate offensive rights in the absence of a patent.
You should consider the commercial viability and
patentability tests separately, since commercial success and
patentability don’t always coincide. Most patented inventions
are not commercially successful and many inventions, such
as the computer, are commercially successful but are not
broadly patentable. Your invention should pass both tests
before you file a patent application on it.
B. Legal Requirements for a Utility Patent
As you can see from Fig. 5A, the legal requirements for a
utility patent can be represented by a mountain having four
upward sections, each of which represents a separate test
that every invention must pass to be awarded the patent.
The PTO is required by statute to examine every utility
patent application to be sure it passes each of these tests. If
it does, the PTO must award the inventor(s) a patent.
Fig. 5A—Patentability Mountain
The Four Legal Requirements for Getting a Utility Patent
The four requirements and the pertinent respective
statutes are:
1. Statutory Class: Will the PTO consider that the
invention fits into one of five classes established by
Congress? (35 USC 101.) Or put specifically, will the
PTO regard it as either a:
■■
process (method)
■■
machine
■■
article of manufacture
■■
composition, or
■ ■ “new use” of one of the first four.
2. Utility: Can the invention properly be regarded as a
useful one (or ornamental in the case of designs)? (35
USC 101.)
3. Novelty: Will the PTO consider that the invention is
novel—that is, does it have any aspect or feature that
is different in any way from all previous inventions
and knowledge (that is, the relevant prior art)? (35
USC 102.)
4. Unobviousness: Will the PTO consider that the
invention is unobvious from the standpoint of
someone who has ordinary skill in the specific
technology involved in the invention—that is, does
it provide one or more new and unexpected results?
(When dealing with designs, the question becomes:
Will the PTO consider the design unobvious in an
ornamental or aesthetic sense?) (35 USC 103.)