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What is required for an invention to be patentable?

Are some inventions not patentable? Evaluating patentability can come with questions. Here are some steps to review when deciding if your invention is patentable.

What is required for an invention to be patentable?

The first hurdle for an invention is to qualify as “statutory subject matter,” meaning it must be one of the following:

  • A new and useful process (example: new method of converting biological material into fuel);
  • A new and useful machine (example: new type of wireless device);
  • A new and useful manufacture (example: new type of snowboard);
  • A new and useful composition of matter (example: new chemical formula or pharmaceutical formulation); or
  • A new and useful improvement of any of the above.

An invention also must satisfy additional requirements, and these vary for the different patent types. For example, for a utility patent, a claim must be directed to a useful, novel, and “nonobvious” subject matter.

Usefulness is typically challenged by the USPTO only when the utility or effectiveness of an invention is questionable. This means patents may be granted even for humorous inventions—as long as they work. To be “novel,” an invention must be different from whatever is already publicly known or available (called “prior art”). An invention is considered nonobvious if, at the time of the invention, it was not obvious to a person of “ordinary skill” in the inventor’s field. A determination of nonobviousness is based on a legal analysis of the prior art in view of additional factors.

How should I evaluate the patentability of my technology?

You should consult an attorney to help you evaluate the patentability of a technology that is important to you or your company. A search for prior art using both scientific and patent databases can be useful. Your patent attorney can assist you or perform an independent search.

Once the most relevant prior art has been identified, your patent attorney can help you identify patentable inventions that may be claimed. For example, determining the obviousness of a technology can involve a complex legal evaluation.

It is common for inventors to believe much of their work is obvious. However, an invention is probably not obvious if it solves a problem others attempted—but failed—to solve, if an invention yields surprising, unexpected results, or if the inventor’s work lay in the discovery of an unidentified problem, even if the solution was trivial once the problem was discovered. Events occurring years after the invention was made can influence the determination of nonobviousness, such as commercial success of the invention or copying of the invention by others. You also can obtain a patentability opinion from your patent attorney, which is a report that evaluates the likelihood of obtaining a patent in view of published references that are identified.

Are some inventions not patentable?

Yes. Common examples that cannot be patented include mathematical formulae or theoretical phenomena, laws of nature, naturally occurring substances in their naturally occurring environment, choreographed dance routines (or other processes provided by human motor coordination), and anything used for illegal purposes.

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