What Are The Five Requirements for Patentability?

Inventing a product is an outstanding achievement, and many inventors are eager to protect their intellectual property to prevent others from using it. One of the first things inventors think about is patenting.

However, it isn’t as easy as it seems. Before patenting your invention, which can be a lot of work, you must determine whether or not the invention is patentable. While you may be excited about your invention, first check whether it meets certain requirements.

The process of patenting an invention can be overwhelming, which is why many inventors work with a patent attorney to confirm eligibility and help them with the process. But before you can hire a patent attorney, read this article to check that your invention is patentable.

The five requirements for patentability

Inventors need a patent to legally protect their intellectual property. To do that, the invention must meet the following five requirements:

1. Novelty

Novelty is one of the requirements for patentability. That is, the invention must be new before you can patent it. You can’t patent it if there has been a public disclosure of the invention for more than a year before the application filing date. Furthermore, it is not novel if the public already knows about it before you invented it, if it’s described in a printed publication, or if it has been sold or used publicly for more than one year before filing.

In addition, it’s not new if it has been described in a published patent application or is already an issued patent before filing. Therefore, you should check the government database to confirm that your invention is new.

After public disclosure or sale, you have a one-year grace to file for a patent. You lose all rights to patent the invention after the one-year window lapses. You should note that there’s a high chance that the one-year window has begun even when you show the invention to friends without putting legal measures in place.

Consider working with a lawyer during the invention’s development. You should also check that none of your invention features are similar to a previous patent. The examining officer will check for this and may reject your application if it’s similar to a registered patent for lack of novelty.

2. Utility

You can’t patent your invention if it falls short of the utility requirement. Your patent application approval also depends on whether the invention is useful. You can easily meet this requirement if your invention pertains to computer and electronic technologies. This requirement is more important if you want to patent a chemical or pharmaceutical compound. 

You must specify and demonstrate the specific or practical usability of the invention. Furthermore, the invention is useful only when it can serve the purpose for which you designed it. You can break the utility requirement into three; operability, practical utility, and beneficial utility.

The utility requirement is quite broad. Often, you can determine the usefulness of an invention until years after it is patented. The inventor is responsible for explaining, demonstrating, and proving the usefulness of their creation, as the USPTO can’t guess its objective.

3. Non-obviousness

The invention must be non-obvious to get your patent application approved. You can determine this by checking whether the invention is not obvious to a person with ordinary skill to which the invention pertains. It shouldn’t be obvious at the time of filing. For example, merely improving a past feature of an already patented invention is obvious and won’t pass your idea as novel.

People can easily identify it and reference it to a feature of an existing patent. Usually, the examining officer will review past patent documents and check your invention against patents with similar features as yours. The officer will deem it obvious and not novel if there are similar features between your invention and an existing patent.

If there are none, the officer will combine two or more existing patents to check if you combined features from other patents to make yours. The examining officer will reject your application if that is the case. 

You can’t patent your invention if you merely switch the materials or sizes of an existing patent or use or improve the feature. Therefore, you should always research and confirm that your invention is unique.

4. Subject matter eligibility

Another requirement is that your invention must fall under patentable subject matters. Under the Patent Act, you can only patent processes, articles of manufacture, machines, or the composition of matter. Generally, if you invent physical devices, you don’t have to worry about whether it meets the subject matter eligibility.

However, it can be challenging to decide whether certain inventions are patentable. For example, software inventions relating to some diagnostics or medical tests may fail the subject matter eligibility and not be patentable even though they are new and useful. 

Furthermore, abstract ideas, natural phenomena, laws of nature, printed materials, and artistic and literary creations may not be patentable. This is because there are other provisions like copyrights and trademark law in which they fit much better. 

Therefore, check whether your idea should be registered under these before applying for a patent. Speaking to a patent attorney will save you the time and stress of applying for a patent and rejection when it’s only a trademark that’s needed. 

5. Writing requirements

The last requirement your patent must meet is the writing requirement. This means you must be able to describe your invention such that anyone skilled in the art or science can make and use it without undue experimentation after the patent expires.

This doesn’t mean that the experimentation must be easy, but that the amount of experiment needed to replicate the invention be reasonable. The amount of detail needed depends on the complexity of the invention.

Furthermore, the written description must be understandable to people skilled or trained in the discipline and disclose the best way to make use of the invention.

Conclusion

Before filing for an application, determine whether or not your invention is patentable. This will prevent rejection due to failure to confirm on your side. Working with a patent attorney will also save you time, as they can research on your behalf, ensure you’re in line with the requirements, and file the application on your behalf.