Criteria for Patenting Quiz

PDF page 50: Before reading this section, please watch the overview video below covering what you can and cannot patent. You can’t patent an idea (like an idea for a better mousetrap), only an application of that idea in a practical invention. Novelty, utility, and non-obviousness—the holy trinity of patents. Access multimedia content (http://openstax.org/books/introduction-intellectual-property/pages/1-7-criteriafor-patenting) Now that you’ve learned what can be patented and what cannot, we will next examine the criteria for determining if a patent-eligible invention actually merits one. These criteria center around three concepts xlix mentioned in the previous section and enumerated in the Patent Act: novelty, utility, and non- obviousness.

PDF page 50: The requirement in Sections 101 and 102 of the Patent Act for novelty in an invention means that to qualify for a patent, a machine, manufacture, process, or composition of matter must not have been previously described or known. Specifically, it must not have been patented, described in an unpublished or published patent application, explained in a printed publication such as an article or technical paper, or publicly known prior to the filing date of the new patent application. In addition, it must not have been published, used in public, or

PDF page 50: • Understand why non-obviousness is the most difficult hurdle to overcome.

PDF page 53: Taken together, the three patenting criteria—novelty, utility, and non-obviousness—function like the obstacles in an Olympic hurdles race. The utility hurdle is easiest to overcome. The novelty hurdle less so. But by far, the highest hurdle facing inventors is non-obviousness.

PDF page 50: Before reading this section, please watch the overview video below covering what you can and cannot patent. You can’t patent an idea (like an idea for a better mousetrap), only an application of that idea in a practical invention. Novelty, utility, and non-obviousness—the holy trinity of patents. Access multimedia content (http://openstax.org/books/introduction-intellectual-property/pages/1-7-criteriafor-patenting) Now that you’ve learned what can be patented and what cannot, we will next examine the criteria for determining if a patent-eligible invention actually merits one. These criteria center around three concepts xlix mentioned in the previous section and enumerated in the Patent Act: novelty, utility, and non- obviousness.

PDF page 51: offered for sale by the applicant or their colleagues more than 12 months prior to the filing of a patent application.

PDF page 51: domain) If any of the above is true of an invention, it is said to have been “anticipated” and cannot be patented. These novelty requirements exist whether the “prior art”—the catchall term for any previous patent, publication, or use—is domestic or foreign.

PDF page 51: domain) If any of the above is true of an invention, it is said to have been “anticipated” and cannot be patented. These novelty requirements exist whether the “prior art”—the catchall term for any previous patent, publication, or use—is domestic or foreign.

PDF page 51: domain) If any of the above is true of an invention, it is said to have been “anticipated” and cannot be patented. These novelty requirements exist whether the “prior art”—the catchall term for any previous patent, publication, or use—is domestic or foreign.

PDF page 52: As the Star Trek example suggests, the novelty issue can also touch on the question of utility—the second patentability criteria. Utility has a special meaning in patent law, which is simply that an invention must function and be of some benefit qualitatively—although no minimum quantum of benefit is necessary. The landscape of business is littered with companies that have invented not very useful or necessary products. But these may satisfy the requirement for utility if at least someone would find them useful.

PDF page 52: But snake oil medicines and other products that do not work in any meaningful way will not meet the requirement for utility. “The inventor of an ineffective drug may not obtain a patent merely because he convinces gullible patients that it has a non-existent curative effect,” Miller and Davis note. “It is not so much that it lacks a minimum quantum of benefit (the patients may find it subjectively useful), but it is, instead, that it has an impermissible fraudulent quality.”

PDF page 52: Commons / Public domain) Even when no fraud is intended, the utility of a product or process must be demonstrate in a patent application—not presumed, but affirmatively demonstrated. Simply put, the thing or the method you have invented must actually work as it is intended and claimed to work. “Forget Star Trek for a moment,” says Quinn. “On a more mundane level, the USPTO used to deny patents for methods and compositions for re-growing hair. These were seen as lacking utility because re-growing hair was believed to be impossible. Finally, someone was able to prove that his method and composition actually regrew hair on a bald scalp. The patent examiners withdrew their rejection, and patents for such products have issued ever since.” Interestingly, Quinn explains, since the earlier patent applications on hair-growing products didn’t describe anything that actually worked, they could not be used under the novelty bar to block later patent applications for hair-growing products that did work.

PDF page 52: Commons / Public domain) Even when no fraud is intended, the utility of a product or process must be demonstrate in a patent application—not presumed, but affirmatively demonstrated. Simply put, the thing or the method you have invented must actually work as it is intended and claimed to work. “Forget Star Trek for a moment,” says Quinn. “On a more mundane level, the USPTO used to deny patents for methods and compositions for re-growing hair. These were seen as lacking utility because re-growing hair was believed to be impossible. Finally, someone was able to prove that his method and composition actually regrew hair on a bald scalp. The patent examiners withdrew their rejection, and patents for such products have issued ever since.” Interestingly, Quinn explains, since the earlier patent applications on hair-growing products didn’t describe anything that actually worked, they could not be used under the novelty bar to block later patent applications for hair-growing products that did work.

PDF page 53: But to offer a more practical example, say you invent a wheeled cart to move office supplies more easily between departments. If this is the first such wheeled office cart in history, you can get a patent for it. But if you then decide, “Hey, why not put those wheels on a chair?” you won’t get a patent for it. That’s because combining two such widely-known and available elements would be obvious to anyone skilled in the art of office furniture design. But things are not so obvious when it comes to inventing a camera phone. Even though it’s composed of wellknown and widely-available components, combining the two did satisfy the requirement for non-obviousness because it became more than the sum of its parts and met a large and previously-unfilled need in the marketplace. The millions of people who take selfies everyday is certainly proof of that.

PDF page 53: There are various ways of presenting evidence that your invention satisfies the non-obvious requirement for patentability. You can demonstrate that the existing elements of your invention, although individually already known, yield an unexpected or hidden result. Or you can show that your invention, although composed of well- known and widely available components, when combined satisfies a long-felt but previously unfilled need in the marketplace, thus indicating its non-obviousness. Both of these demonstrations of non-obviousness apply to the camera phone example above.