Is My Invention Patentable?

DEREK FAHEY, ESQ.

One of the most common questions inventors ask is whether they can patent an invention. Although several types of patents exist, utility patents protect how an invention functions.

The answer depends on the specific invention, but the legal framework is generally the same. Under United States law, a utility invention must be useful, fall within patentable subject matter, be new, and be non-obvious.

Usefulness

An invention must be usable and provide some benefit. This is usually a low hurdle, and inventions are rarely rejected solely because they lack utility.

Patentable Subject Matter

Patentable subject matter includes machines, manufactures, processes, compositions of matter, and useful improvements. Laws of nature, physical phenomena, abstract ideas, and pure logic are not patentable by themselves.

Software inventions can face particular challenges under this requirement. Software is not automatically excluded, but the claims must be drafted to satisfy current subject-matter eligibility law.

Novelty

An invention must be new. During examination, the USPTO searches patents, patent applications, publications, and other references. If one earlier disclosure contains every element of the claimed invention, the examiner may reject the claim as not novel.

Non-Obviousness

The invention must also be non-obvious to a person having ordinary skill in the relevant field. An examiner may combine multiple references and argue that the claimed invention would have been an obvious variation of what was already known.

The Role of a Prior-Art Search

A prior-art search is not legally required, but it can identify existing patents and publications that may affect patentability. The results can help counsel estimate the probability of allowance and develop a more effective filing strategy.

Because patentability turns on the details of the invention and the available prior art, applicants should evaluate these requirements before investing in a patent application.