Within the context of a
nationalA sovereign state is a political association with effective internal and external sovereignty over a geographic area and population which is not dependent on, or subject to any other power or state...
or
multilateralMultilateralism is a term in international relations that refers to multiple countries working in concert on a given issue.Most international organizations, such as the United Nations and the World Trade Organization are multilateral in nature...
body of
lawLaw is a system of rules, usually enforced through a set of institutions. It shapes politics, economics and society in numerous ways and serves as a primary social mediator of relations between people. Contract law regulates everything from buying a bus ticket to trading on derivatives markets...
, an
inventionAn invention is a new configuration, device, or process. Some inventions are based on pre-existing models or ideas and others are radical breakthroughs...
is
patentable if it meets the relevant legal conditions to be granted a
patentA patent is a set of exclusive rights granted by a state to an inventor or their assignee for a limited period of time in exchange for a 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.
The patent laws usually require that, in order for an invention to be patentable, it must
- be of patentable subject matter
Patentable, 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...
, ie a kind of subject-matter that is eligible for patent protection,
- be novel
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.
Within the context of a
nationalA sovereign state is a political association with effective internal and external sovereignty over a geographic area and population which is not dependent on, or subject to any other power or state...
or
multilateralMultilateralism is a term in international relations that refers to multiple countries working in concert on a given issue.Most international organizations, such as the United Nations and the World Trade Organization are multilateral in nature...
body of
lawLaw is a system of rules, usually enforced through a set of institutions. It shapes politics, economics and society in numerous ways and serves as a primary social mediator of relations between people. Contract law regulates everything from buying a bus ticket to trading on derivatives markets...
, an
inventionAn invention is a new configuration, device, or process. Some inventions are based on pre-existing models or ideas and others are radical breakthroughs...
is
patentable if it meets the relevant legal conditions to be granted a
patentA patent is a set of exclusive rights granted by a state to an inventor or their assignee for a limited period of time in exchange for a 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 matter
Patentable, 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...
, ie a kind of subject-matter that is eligible for patent protection,
- be novel
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-obvious
The 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 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 in the United States Constitution. Congress implemented these...
) or involve an inventive stepThe 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 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 useful
In United States patent law, utility is a patentability requirement. Today, the utility requirement is the lowest bar and is easily met. Largely utility is used to prevent the patenting of inoperative devices such as perpetual motion machines...
(in U.S. patent law) or be susceptible of industrial applicationIn 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 disclosureMost 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 inventionIn 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 requirementMost 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
examinationA 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 applicationA 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. Although the grant of a patent creates a presumption that the
claimPatent claims are usually in the form of a series of specified elements and corresponding limitations, or more precisely noun phrases, following the description portion of the invention in a patent or patent application. The claims define, in technical terms, the extent of the protection conferred...
ed invention is valid, errors in the granting procedure may occur and previously unconsidered
prior artPrior 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...
may be brought to light only after the patent was granted, but under higher scrutiny based on the presumption of validity.
Prior to filing a patent application,
inventorAn inventor is a person who creates or discovers a new method, form, device or other useful means. The word inventor comes form the latin verb invenire, invent-, to find...
s sometimes obtain a patentability opinion from a
patent agentA 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 attorneyA 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 ConventionThe 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
oppositionThe 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
reexaminationIn 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
lawsuitA lawsuit is a civil action brought before a court of law in which a plaintiff, a party who claims to have received damages from a defendant's actions, seeks 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 validityIn 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 does not necessarily mean that that invention does not also
infringePatent 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 licence. The definition of patent infringement may vary by jurisdiction, but it typically includes using or...
another patent. The first patent in a given area may have a broad claim covering the concept of the invention since there is no prior art in that area. Later, a specific implementation of that concept may be invented, which is patentable as it is not disclosed in the earlier patent, but that falls within the claim to the general concept. The later inventor must, therefore, obtain a licence from earlier proprietor to be able to exploit his invention.
Thomas EdisonThomas Alva Edison was an American inventor, scientist and businessman who 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...
's thin carbon filament light bulb was a patentable improvement over the earlier patented
WoodwardHenry Woodward was an early pioneer in the development of the incandescent lamp. On July 24, 1874, he and his partner, Mathew Evans, a hotel keeper, patented an improved electric light bulb. Woodward was a medical student at the time. Their light bulb comprised a glass tube with a large piece of...
and
EvansMatthew Evans is one of two Canadians who developed and patented an incandescent light bulb, on July 24, 1874, five years before Thomas 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 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 in the United States Constitution. Congress implemented these...
,
inventorshipIn 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
constitutionalThe Constitution of the United States of America is the supreme law of the United States. It is the foundation and source of the legal authority underlying the existence of the United States of America and the federal government of the United States...
requirement.
CongressThe United States Congress is the bicameral legislature of the federal government of the United States of America, consisting of two houses, the Senate and the House of Representatives. Both senators and representatives are chosen through direct election....
' ability to grant patents is authorized only for the inventor. This was confirmed by
case lawCase law is the reported decisions of selected appellate and other courts 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. ยง 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 ProcedureThe Manual of Patent Examining Procedure is a manual 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...
or MPEP. This is published by the
United States Patent and Trademark OfficeThe 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 currently based in Alexandria,...
(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 paraphernalia
In modern usage, the word paraphernalia most commonly refers to equipment, apparatus, or furnishing used in or necessary for a particular activity as in "Beth is such an avid sports fan, 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 practitionerThe person having ordinary skill in the art , the person of ordinary skill in the art, the person skilled in the art, or the man skilled in the art 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 Hand
Billings 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.The United States Court of Appeals for the Second Circuit is one of the thirteen United States Courts of Appeals...
1950).
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 divide
The idea-expression divide or idea-expression dichotomy is a concept which explains the appropriate function of copyright laws, which are generally designed to protect the fixed expression or manifestation of an idea rather than the fundamental idea itself. The case of Baker v. Selden was the first...
A copyright law concept often [erroneously] raised in the patent context.
External links