Patent It Yourself - PDF Archive

102 | Patent it YOURSELF
This raises an important point. The fact that a patent is
granted doesn’t mean that the underlying invention will
work. It only means that the invention as described on
paper appeared to a patent examiner to work (or that the
examiner couldn’t figure out why it wouldn’t work).
The PTO, however, has become more careful about
perpetual-energy or perpetual-motion machines. Some
years ago, it denied an inventor a patent on a perpetual
energy machine. The inventor took the case to the courts,
but lost after the National Bureau of Standards, acting as a
court expert, found the machine didn’t have an efficiency of
over 100%.
It’s a common misconception that the PTO won’t “accept”
patent applications on perpetual-motion machines: The PTO
will accept the application for filing (see Chapter 13), since
filing and docketing are clerical functions. However, the
examiner (a degreed professional) will almost certainly
reject it later as inoperative (giving reasons) after a formal
examination.
6. Nuclear Weapons
The invention must not be a nuclear weapon; such inventions
aren’t patentable because of a special statute. However,
if you’ve invented a doomsday machine, don’t be
discouraged: You can be rewarded directly by making an
application with the DOE (Department of Energy), formerly
the Atomic Energy Commission.
7. Theoretical Phenomena
Theoretical phenomena per se, such as the phenomenon of
superconductivity, the transistor effect, or the discovery of
logarithms aren’t patentable per se. You must describe and
claim (see Chapter 9) a practical, realistic, hardware-based
version of your invention for the PTO to consider it useful.
8. Aesthetic Purpose
If the invention’s sole purpose or “function” is aesthetic,
the PTO will reject it as lacking utility; such inventions
should usually be the subject of a design patent application.
A beautiful vase of unique design, a computer case whose
unique shape does not make the computer operate better,
and a computer program for producing a low-brightness
design on an idle computer monitor, where the only novelty
is the aesthetic uniqueness of the design, are examples of
inventions which the law considers to lack statutory utility.
However, if the design has a functional purpose then
statutory utility would be present. For example, if the shape
of the vase makes it easier and safer to lift, or if the shape of
the computer case makes it cheaper to manufacture, or if
an airplane has a unique type of fairing that enables it to fly
at supersonic speeds without buffeting, then the PTO will
hold there is utility.
E. Requirement #3: Novelty
Now let’s look at the novelty requirement of a patent. Like
“unobviousness” (discussed in Section F), this requirement
is often misunderstood.
1. Prior Art
Your invention must be novel in order to qualify for a
patent. In order for your invention to meet this novelty
test it must have some physical or method-step difference
over all prior developments that are available to the public
anywhere in the world. In the realm of patent law, these
prior developments and concepts are collectively referred
to as “prior art.” Unfortunately, like many things in the
law, the determination of what is prior art can be quite
complex and involved. Accordingly, before I tell you how
to determine whether your invention is novel, it’s vital to
understand what your invention must differ from—that is,
how the law defines “prior art.”
a. What Is Prior Art?
According to Section 102 of the patent laws, the term “prior
art” means generally the state of knowledge existing or
publicly available either before the date of your invention or
more than one year prior to your earliest patent application
date.
b. Date of Your Invention
Clearly, in order to decide what prior art is with respect to
any given invention, it’s first necessary to determine the
“date of your invention.” Most inventors think it’s the date
on which one files a patent application. While this date is
important, and you can always use it if you have nothing
better, the U.S. has a somewhat complicated “first-toinvent”
patent system (as opposed to the rest of the world’s
“first-to-file” system). Under the U.S. system you can
usually go back earlier than your filing date if you can prove
that you conceived of the invention or built and tested it
earlier than your filing date. (See Chapter 3.) That is, in the
U.S. your date of invention is the earliest of:
• the date you filed your patent application (provisional
or regular)