THE SIX REQUIREMENTS OF PATENTABILITY - Patent law

The remaining portions of this text will deal almost exclusively with the requirements of patent ability—the substantive law. As we wander through these sometimes dense woods, bumping against a seemingly endless and sometimes bewildering array of terms, rules, exceptions, interpretations, comments, opinions, and so on, it would be all too easy to get lost and forget what we set about to learn in the first place. We should be careful not to lose the forest for the trees in front of us. To help avoid getting lost, the thinnest of outlines is provided in this section; let it be your compass.If you find yourself buried in a section and feeling a little confused (like perhaps you’re losing the big picture), please be encouraged to turn back to this section and review the basic requirements of patentability. These are the guiding principles of patent law, all the rest is just nuance and texture. Ready?

  1. §101: Thou Shalt Patent Useful Inventions Only. This is the utility requirement. Essentially, there are two parts to the utility requirement. The first part deals with whether the invention falls within statutory subject matter. In effect,not all inventions are created equal, and some fall outside the scope of what can be patented. In order to be statutory subject matter, the claim must be directed to a process, machine, manufacture, or composition of matter. The second part of the utility requirement asks whether the thing to be patented is actually useful. I know what you’re thinking: “If the thing is n’t useful, why would I want to patent it any way?” Ask that question to the guys who invented the non-stick tape.

  2. §102: Thou Shalt PatentNovelInventionsOnly. This requirement is referred to as, surprise, the novelty requirement (patent law is tricky, is n’t it?). People have this strange tendency to copy each other and then somehow think that it was their idea to begin with. When somebody steals one of your jokes, that’s one thing because you probably stole it from somebody else in the first place.But when somebody tries to patent something that is n’t new, she is basically trying to steal from everybody; this is really antithetical to the primary purpose of patent law, which is to encourage people to make new things.

  3. §103: Thou Shalt Patent Non obvious Inventions Only. It’s a funny thing that happens when people really get their creative juices flowing. They see something they like and then think: “If I change that just a little bit, it will be new and nobody can say that I copied it.”Oldest trick in the book, but some what surprisingly, patent law does n’t really mind you doing this—just so long as the end result is not an obvious variant of what you started with. In other words, if you’re going to copy something and then change it around, you need to make sure that it is changed around enough so that the changes you made would not have been obvious (got it?). But, as we will also learn, if it does appear obvious, the result of your changes must be better than what one would have expected.

  4. §112 1: Thou Shalt Provide Adequate Written Description. The written description requirement demands that the patent specification provides a written description of the work sufficient to show that the inventor was in possession of the claimed invention. This means primarily that there has to be enough detailin the patent specification to adequately support the claims. More will be said on what is meant by “adequately support” but for now let’s appreciate that through the course of prosecuting a patent application, the originally filed claims often get changed around to meet the patentee’s perceived needs as well as the other requirements of patentability (e.g. novelty, non-obviousness).During this course of changing the claims during the patent prosecution, the patent attorneys and agents sometimes get carried away and end up trying to claim something that is not really in their patent application. Let’s just say that the patent office frowns on this type of improvisation.

  5. §112 1: Thou Shalt Enable Your Invention. To qualify for a patent, the application, as submitted, must teach one of ordinary skill in the art (the PHOSITA) how to make and use the claimed invention without undue experimentation;this is commonly referred to as the enablement requirement, and it is part of the patentee’s grand bargain with the public, the one where the inventor receives a valuable right in return for enabling the public in how to make and use the invention for which the patent is granted. We just learned that the whole purpose in getting a patent is so that we could exclude others from making and using our claimed invention. But in order to get the patent,we have to teach them how to make and use the claimed invention. Ironic, yes?

  6. THE-SIX-REQUIREMENTS-OF-PATENTABILITY

    Figure : Patent ability requirement mnemonic.

  7. §112 1: Thou Shalt Teach the BestMode. The best mode requirement means that that the patentee must not only teach one of ordinary skill in the art how to make and use the claimed invention but the patentee must also disclose the best mode for the claimed invention. It is not acceptable to play hide the ball in a patent application. If the patentee(s) believe(s) certain examples or embodiments of the claimed invention are the best way of practicing the claimed invention then they have a duty to disclose those examples or embodiments or they risk rendering their patent non enforceable (they still get to keep the certificate as a souvenir though!).Unfortunately, that does not leave much in the way of a good mnemonic but if you find this sort of thing helpful, take a look at Figure 6.1. The last three requirements are grouped together (WEB) because they all relate to the level of disclosure required in the patent application. Here and in subsequent chapters, we will delve into each of these patent commands in more detail.


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