Part 3 of 6
You already know that to patent something, it needs to be different.
But how different does it have to be to qualify for a patent? In this third video, Rich discusses the basic criteria for patentability.
Distinctiveness is a necessary component to protect your intellectual property with a patent. Under the patent law, there are two different requirements that define distinctiveness.
First, your invention must be novel. In other words, there is nothing exactly like it in the prior art. Second, your invention must be non-obvious. Consulting patent attorneys on whether your invention meets these two legal criteria is vital to the success of your patent application.
When do you call an idea or an invention to be novel? To be novel under patent law, the claimed invention must be different from anything else that is already patented. Moreover, what makes your invention novel is that it must be different from anything else described, sold, or otherwise available in the public arena anywhere in the world. Novelty is therefore analyzed not just against other patents, but against everything available in the public.
This means that whether your claimed invention is a type of machine, composition of matter, or process, it must be different from anything else publicly available at the time of your application filing date. If it is not, it does not meet the novelty requirement and cannot be patented.
The second component of distinctiveness — non-obvious — is a little more challenging, but vital to obtain protection for your intellectual property. It means that the difference between your invention and what other people have done before—the thing that makes your invention unique—cannot be something that would be obvious to someone of ordinary skill in the same field. It has to be something that’s a little bit more unexpected.
That means, even if your invention is novel, and there’s nothing exactly like it, there also must be a difference about which someone in the field couldn’t just say, “Yeah, that’s something I knew I could do. I just haven’t done it, yet.”
For example, if your idea is to make clothes hangers in small sizes for children’s clothes, it may be that your invention is novel—no one has ever made a clothes hanger in exactly that size—but it’s the type of thing that people in the field of manufacturing clothes hangers know they can do. They can make a hanger in any size.
They choose a particular size because it happens to fit most clothes; so they’ve standardized the size. So basically, the idea of changing the size of an existing invention would be an obvious one and not patentable.
There can be some confusion as to what modifications would be obvious and what ones would not be obvious. And people can (and do) differ in opinion on this, too. Frequently, this is where patentability gets confusing for the untrained eye. And usually, this is when a patent attorney gets involved—to give some guidance as to what the patent examiner may or may not allow as truly non-obvious.
Your invention must also be useful in order to obtain a patent. This means the subject matter for your patent must have a useful purpose and must be able to actually perform its intended use. For example, if your invention is a machine intended to operate a particular function, but it is not actually able to operate that function, it is not useful and therefore not patentable.
The U.S. Patent and Trademark Office (USPTO) evaluates the usefulness of an invention by whether a person of ordinary skill in the field would immediately appreciate the invention is useful based on its underlying characteristics.
Moreover, the utility of the invention must be specific, substantial, and credible. Importantly, a patent applicant only needs to provide one credible assertion of your invention’s utility in order to satisfy this requirement.
Consulting prior art is vital to making the best determination of whether your invention is both novel and non-obvious. This prior art search should be done before you submit your patent application. Prior art is essentially the sum total of all information that exists in the public before your patent application is filed related to the subject matter of your idea.
Knowing the prior art related to your invention and knowing whether you can distinguish your invention from that prior art will go a long way for the success of your patent application.
As a patent applicant, the Patent Examiner with the USPTO looking into your application will ask you to distinguish your claims invention from other related ones before your application will be granted.
This is why consulting a patent attorney as early as possible can be important for your application’s success. A patent attorney will be able to help you draft your patent application in a way that shows how your patent is novel, non obvious, and useful. Moreover, the patent attorney will be able to distinguish your invention from prior art.
In part 4 of this series, we’ll look at how we determine the closest prior art to your invention.
Articles and statements on this site are provided for general informational purposes only, and should not be substituted for legal advice.
Legal advice should only be provided through direct contact with an attorney who is fully apprised of all the facts and circumstances of any given case.
ATTORNEY ADVERTISING. Richard W. Goldstein, Goldstein Law Offices, P.C., 300 East 42nd Street · New York, NY 10017 · (212) 828-7200, 101 Tyrellan Avenue, Suite 320 · Staten Island, NY 10309 · (718) 701-0700, 320 Broad St · Red Bank, NJ 07701 · (908) 864-2600, U.S. Patent Office Registration No. 36527, is responsible for content of this page. Prior results do not guarantee a similar outcome.