Patentability
Encyclopedia
Within the context of a national or multilateral
body of law
, an invention
is patentable if it meets the relevant legal conditions to be granted a patent
. By extension, patentability also refers to the substantive conditions that must be met for a patent to be held valid.
Usually the term "patentability" only refers to "substantive" conditions, and does not refer to formal conditions such as the "sufficiency of disclosure
", the "unity of invention
" or the "best mode requirement
".
Judging patentability is one aspect of the official examination
of a patent application
performed by a patent examiner and may be tested in post-grant patent litigation.
Prior to filing a patent application, inventors sometimes obtain a patentability opinion from a patent agent
or patent attorney
regarding whether an invention satisfies the substantive conditions of patentability.
, any person can file an opposition
provided they act promptly after grant of the patent. In the United States, members of the public can initiate reexamination
proceedings. Japan provides similar options as well.
Members of the public can also initiate lawsuit
s in the courts of various nations to have patents declared invalid.
United Kingdom patents can be reviewed by way of a non-binding opinion issued by the Patent Office, or by formal applications for revocation before the Patent Office or the Court. If the patent survives a revocation action, this is noted for future reference by way of a Certificate of contested validity
.
another patent. The first patent in a given area might include a broad claim covering a general inventive concept if there is at that point no relevant prior art
. Later, a specific implementation of that concept might be patentable if it is not disclosed in the earlier patent (or any intervening prior art
, but nevertheless still falls within the scope of the earlier claim (covering the general concept). The later inventor must, therefore, obtain a license from the earlier inventor in order to be able to exploit his or her invention. At the same time, the earlier inventor might want to obtain a license from the later inventor, particularly if the later invention represents a significant improvement in the implementation of the original broad concept. In this case, the two would enter into a cross license.
Thomas Edison
's thin carbon filament light bulb was a patentable improvement over the earlier patented Woodward
and Evans
thick carbon filament light bulb. Thomas Edison bought the Woodward patent for $US 5,000 before he began his development work so that Woodward would not be able to sue him for patent infringement after Edison became commercially successful.
, inventorship
is also regarded as a patentability criterion. It is a constitutional
requirement. Congress
's ability to grant patents is authorized only for the inventor. This was confirmed by case law
: "Inventorship is indeed relevant to patentability under 35 U.S.C. § 102(f), and patents have in the past been held unenforceable for failure to correctly name inventors in cases where the named inventors acted in bad faith or with deceptive intent."
Details on patentability in the U.S. can be found in the Manual of Patent Examining Procedure
or MPEP. This is published by the United States Patent and Trademark Office
(USPTO) and is the reference manual used by both patent examiners and patent agents/attorneys. Chapter 2100, in particular, gives a comprehensive overview of the standards for patentability, a discussion of the related case law, and guidance on how to overcome an examiner's rejection of a given set of claims.
In the United States, the patent grant is presumptive, e.g. a patent shall issue unless the patent statutes preclude the grant. In other words, the burden is on the Patent Office to prove why a patent should not be granted. Once a patent issues, however, it is presumed valid and a court may declare it invalid only on the basis of clear and convincing evidence.
Multilateralism
Multilateralism is a term in international relations that refers to multiple countries working in concert on a given issue.International organizations, such as the United Nations and the World Trade Organization are multilateral in nature...
body of law
Law
Law is a system of rules and guidelines which are enforced through social institutions to govern behavior, wherever possible. It shapes politics, economics and society in numerous ways and serves as a social mediator of relations between people. Contract law regulates everything from buying a bus...
, an invention
Invention
An invention is a novel composition, device, or process. An invention may be derived from a pre-existing model or idea, or it could be independently conceived, in which case it may be a radical breakthrough. In addition, there is cultural invention, which is an innovative set of useful social...
is patentable if it meets the relevant legal conditions to be granted a patent
Patent
A patent is a form of intellectual property. It consists of a set of exclusive rights granted by a sovereign state to an inventor or their assignee for a limited period of time in exchange for the public disclosure of an invention....
. By extension, patentability also refers to the substantive conditions that must be met for a patent to be held valid.
Requirements
The patent laws usually require that, in order for an invention to be patentable, it must- be of patentable subject matterPatentable subject matterPatentable, statutory or patent-eligible subject matter is subject matter which is susceptible of patent protection. The laws or patent practices of many countries suggest that certain subject matter is or is not something for which a patent should be granted.Together with novelty, inventive step...
, i.e., a kind of subject-matter that is eligible for patent protection, - be novelNovelty (patent)Novelty is a patentability requirement. An invention is not patentable if the claimed subject matter was disclosed before the date of filing, or before the date of priority if a priority is claimed, of the patent application....
(i.e. at least some aspect of it must be new), - be non-obviousInventive step and non-obviousnessThe inventive step and non-obviousness reflect a same general patentability requirement present in most patent laws, according to which an invention should be sufficiently inventive — i.e., non-obvious — in order to be patented....
(in United States patent lawUnited States patent lawUnited States patent law was established "to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;" as provided by the United States Constitution. Congress implemented these...
) or involve an inventive stepInventive step and non-obviousnessThe inventive step and non-obviousness reflect a same general patentability requirement present in most patent laws, according to which an invention should be sufficiently inventive — i.e., non-obvious — in order to be patented....
(in European patent lawEuropean patent lawEuropean patent law covers a wide range of legislations including national patent laws, the Strasbourg Convention of 1963, the European Patent Convention of 1973, and a number of European Union directives and regulations....
); and - be usefulUtility (patent)In United States patent law, utility is a patentability requirement. As provided by , an invention is "useful" if it provides some identifiable benefit and is capable of use...
(in U.S. patent law) or be susceptible of industrial applicationIndustrial applicabilityIn patent law, industrial applicability or industrial application is a patentability requirement according to which a patent can only be granted for an invention which is susceptible of industrial application, i.e. for an invention which can be made or used in some kind of industry. In this...
(in European patent law).
Usually the term "patentability" only refers to "substantive" conditions, and does not refer to formal conditions such as the "sufficiency of disclosure
Sufficiency of disclosure
Most patent law systems require that a patent application disclose a claimed invention in sufficient detail for the notional person skilled in the art to carry out that claimed invention. This requirement is often known as sufficiency of disclosure or enablement, depending on the...
", the "unity of invention
Unity of invention
In most patent laws, unity of invention is a formal administrative requirement that must be met by a patent application to become a granted patent. Basically, a patent application can relate only to one invention or a group of closely related inventions. The purpose of this requirement is...
" or the "best mode requirement
Sufficiency of disclosure
Most patent law systems require that a patent application disclose a claimed invention in sufficient detail for the notional person skilled in the art to carry out that claimed invention. This requirement is often known as sufficiency of disclosure or enablement, depending on the...
".
Judging patentability is one aspect of the official examination
Patent application
A patent application is a request pending at a patent office for the grant of a patent for the invention described and claimed by that application. An application consists of a description of the invention , together with official forms and correspondence relating to the application...
of a patent application
Patent application
A patent application is a request pending at a patent office for the grant of a patent for the invention described and claimed by that application. An application consists of a description of the invention , together with official forms and correspondence relating to the application...
performed by a patent examiner and may be tested in post-grant patent litigation.
Prior to filing a patent application, inventors sometimes obtain a patentability opinion from a patent agent
Patent attorney
A patent attorney is an attorney who has the specialized qualifications necessary for representing clients in obtaining patents and acting in all matters and procedures relating to patent law and practice, such as filing an opposition...
or patent attorney
Patent attorney
A patent attorney is an attorney who has the specialized qualifications necessary for representing clients in obtaining patents and acting in all matters and procedures relating to patent law and practice, such as filing an opposition...
regarding whether an invention satisfies the substantive conditions of patentability.
Opposition and reexamination
Many national and regional patent offices provide procedures for reconsidering whether or not a given patent is valid after grant. Under the European Patent ConventionEuropean Patent Convention
The Convention on the Grant of European Patents of 5 October 1973, commonly known as the European Patent Convention , is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to which European patents are granted...
, any person can file an opposition
Opposition procedure before the European Patent Office
The opposition procedure before the European Patent Office is a post-grant, contentious, inter partes, administrative procedure intended to allow any European patent to be centrally opposed...
provided they act promptly after grant of the patent. In the United States, members of the public can initiate reexamination
Reexamination
In United States patent law, a reexamination is a process whereby a third party or inventor can have a patent reexamined by a patent examiner to verify that the subject matter it claims is patentable...
proceedings. Japan provides similar options as well.
Members of the public can also initiate lawsuit
Lawsuit
A lawsuit or "suit in law" is a civil action brought in a court of law in which a plaintiff, a party who claims to have incurred loss as a result of a defendant's actions, demands a legal or equitable remedy. The defendant is required to respond to the plaintiff's complaint...
s in the courts of various nations to have patents declared invalid.
United Kingdom patents can be reviewed by way of a non-binding opinion issued by the Patent Office, or by formal applications for revocation before the Patent Office or the Court. If the patent survives a revocation action, this is noted for future reference by way of a Certificate of contested validity
Certificate of contested validity
In United Kingdom patent law, a certificate of contested validity is an order usually made by the Patents Court or Patents County Court after a patent infringement action in which the validity of the patent is unsuccessfully challenged.Section 65 of the UK Patents Act 1977 allows the Court to make...
.
Infringement
The fact that an invention is patentable or even patented does not necessarily mean that use of the invention would not also infringePatent infringement
Patent infringement is the commission of a prohibited act with respect to a patented invention without permission from the patent holder. Permission may typically be granted in the form of a license. The definition of patent infringement may vary by jurisdiction, but it typically includes using or...
another patent. The first patent in a given area might include a broad claim covering a general inventive concept if there is at that point no relevant prior art
Prior art
Prior art , in most systems of patent law, constitutes all information that has been made available to the public in any form before a given date that might be relevant to a patent's claims of originality...
. Later, a specific implementation of that concept might be patentable if it is not disclosed in the earlier patent (or any intervening prior art
Prior art
Prior art , in most systems of patent law, constitutes all information that has been made available to the public in any form before a given date that might be relevant to a patent's claims of originality...
, but nevertheless still falls within the scope of the earlier claim (covering the general concept). The later inventor must, therefore, obtain a license from the earlier inventor in order to be able to exploit his or her invention. At the same time, the earlier inventor might want to obtain a license from the later inventor, particularly if the later invention represents a significant improvement in the implementation of the original broad concept. In this case, the two would enter into a cross license.
Thomas Edison
Thomas Edison
Thomas Alva Edison was an American inventor and businessman. He developed many devices that greatly influenced life around the world, including the phonograph, the motion picture camera, and a long-lasting, practical electric light bulb. In addition, he created the world’s first industrial...
's thin carbon filament light bulb was a patentable improvement over the earlier patented Woodward
Henry Woodward (inventor)
Henry Woodward was a Canadian inventor and a major pioneer in the development of the incandescent lamp.-Work on the incandescent light bulb:On July 24, 1874, Woodward and his partner, Mathew Evans, a hotel keeper, patented an electric light bulb. Woodward was a medical student at the time. Their...
and Evans
Mathew Evans
Mathew Evans is one of two Canadians who developed and patented an incandescent light bulb, on July 24, 1874, five years before Thomas Alva Edison's U.S...
thick carbon filament light bulb. Thomas Edison bought the Woodward patent for $US 5,000 before he began his development work so that Woodward would not be able to sue him for patent infringement after Edison became commercially successful.
United States
Under United States patent lawUnited States patent law
United States patent law was established "to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;" as provided by the United States Constitution. Congress implemented these...
, inventorship
Inventor (patent)
In patent law, an inventor is the person, or persons in United States patent law, who contribute to the claims of a patentable invention. In some patent law frameworks, however, such as in the European Patent Convention and its case law, no explicit, accurate definition of who exactly is an...
is also regarded as a patentability criterion. It is a constitutional
United States Constitution
The Constitution of the United States is the supreme law of the United States of America. It is the framework for the organization of the United States government and for the relationship of the federal government with the states, citizens, and all people within the United States.The first three...
requirement. Congress
United States Congress
The United States Congress is the bicameral legislature of the federal government of the United States, consisting of the Senate and the House of Representatives. The Congress meets in the United States Capitol in Washington, D.C....
's ability to grant patents is authorized only for the inventor. This was confirmed by case law
Case law
In law, case law is the set of reported judicial decisions of selected appellate courts and other courts of first instance which make new interpretations of the law and, therefore, can be cited as precedents in a process known as stare decisis...
: "Inventorship is indeed relevant to patentability under 35 U.S.C. § 102(f), and patents have in the past been held unenforceable for failure to correctly name inventors in cases where the named inventors acted in bad faith or with deceptive intent."
Details on patentability in the U.S. can be found in the Manual of Patent Examining Procedure
Manual of Patent Examining Procedure
The Manual of Patent Examining Procedure is published by the United States Patent and Trademark Office for use by patent attorneys and agents and patent examiners. It describes all of the laws and regulations that must be followed in the examination of U.S. patent applications, and articulates...
or MPEP. This is published by the United States Patent and Trademark Office
United States Patent and Trademark Office
The United States Patent and Trademark Office is an agency in the United States Department of Commerce that issues patents to inventors and businesses for their inventions, and trademark registration for product and intellectual property identification.The USPTO is based in Alexandria, Virginia,...
(USPTO) and is the reference manual used by both patent examiners and patent agents/attorneys. Chapter 2100, in particular, gives a comprehensive overview of the standards for patentability, a discussion of the related case law, and guidance on how to overcome an examiner's rejection of a given set of claims.
In the United States, the patent grant is presumptive, e.g. a patent shall issue unless the patent statutes preclude the grant. In other words, the burden is on the Patent Office to prove why a patent should not be granted. Once a patent issues, however, it is presumed valid and a court may declare it invalid only on the basis of clear and convincing evidence.
Quotes
- [The question whether there is a patentable invention] is as fugitive, impalpable, wayward, and vague a phantom as exists in the whole paraphernaliaParaphernaliaIn modern usage, the word paraphernalia most commonly refers to apparatus, equipment, or furnishing used in or necessary for a particular activity as in, "Beth is such an avid sports fan that her walls are covered with baseball paraphernalia"....
of legal concepts. It involves, or it should involve, as complete a reconstruction of the art that preceded it as is possible. The test of invention is the originality of the discovery, and discovery depends upon the mental act of conceiving the new combination, for substantially every invention is only a combination. Nothing is more illusory, as nothing is more common, than to assume that this can be measured objectively by the magnitude of the physical readjustments required. Courts never tire, or at least in earlier times they never did, of expatiating upon the freshness of insight which observes a little, but fruitful, change which had theretofore escaped detection by those engaged in the field. When all is said, we are called upon imaginatively to project this act of discovery against a hypostatized average practitionerPerson having ordinary skill in the artThe person having ordinary skill in the art , the person of ordinary skill in the art, the skilled addressee, person skilled in the art or simply the skilled person is a legal fiction found in many patent laws throughout the world...
, acquainted with all that has been published and all that has been publicly sold. If there be an issue more troublesome, or more apt for litigation than this, we are not aware of it. (...)- - US Judge Learned HandLearned HandBillings Learned Hand was a United States judge and judicial philosopher. He served on the United States District Court for the Southern District of New York and later the United States Court of Appeals for the Second Circuit...
in Harries v. Air King Prod. Co., 183 F.2d 158, 162 (2d Cir.United States Court of Appeals for the Second CircuitThe United States Court of Appeals for the Second Circuit is one of the thirteen United States Courts of Appeals...
1950).
- - US Judge Learned Hand
See also
See List of patent legal concepts for articles on various legal aspects of patents, including special types of patents and patent applications.- Idea-expression divideIdea-expression divideThe idea–expression divide or idea–expression dichotomy limits the scope of copyright protection by differentiating an idea from the expression or manifestation of that idea.The case of Baker v. Selden was the first U.S...
A copyright law concept often [erroneously] raised in the patent context.
External links
- Patentability requirements in United States patent law, from the USPTO web site "Patentability" (European Patent Office)