Business Law for engineering Case study

Standards for obtaining a patent

Once it is established that an invention falls into the scope of patentable subject matter, it’s

necessary to determine whether the invention meets the substantive standards required for

patentability.

There are three standards: 1) novelty, 2) utility and 3) non-obviousness. We’ll talk about each

of these areas individually. Once these substantive standards have been met, there is still one

more hurdle for the inventor to overcome; the disclosure requirement. And we will discuss

that in detail, as well.

Novelty

Under the novelty requirement, an invention must be new in order to be patented. Although it

may sound relatively easy enough to understand and meet this requirement, there are very

specific standards in the Patent Act on what subject matter will be considered “new.” In

addition, the standard has changed since the passing of the Leahy-Smith America Invents Act

(The new Act is sometimes referred to as “AIA” or the “Leahy-Smith Act”). The new rules for

novelty took effect after March 16, 2013. So, patents filed after that date will be subject to the

new rules. We’ll focus on the new rules for the purposes of this class, but it’s also important to

know what the rules are under the former system, as well, I’ll explain why in a moment.

Under the 1952 Patent Act, novelty was evaluated based on the date of first invention. Under

the AIA, novelty is evaluated from the date a patent application is filed. So that you are familiar

with the common terminology, the previous law was known as first-to-invent and the new law

is known as first-to-file. Most other countries’ patent systems are based on a first-to-file

system. The change in our patent system resulted from pressure to harmonize the US system

to other patent systems.

Why is there a requirement for novelty? The policy behind patent law is that patents should be

granted in order to promote “progress” in the useful arts. The key here is the word “progress.”

Accordingly, patent protection should be afforded to those inventions that add progress and

move the science forward; inventions that are new – or novel! It’s not necessary to provide

protection for things that have already existed or that simply recycle prior innovation. That’s

just not progress. Patent law does not and should not award a monopoly for innovation that is

already in the public domain or something that is merely imitated. That’s what the novelty

standard requires. The invention must be novel compared to the prior art. Prior art can include

anything that is published or publicly known that anticipates, or contains all the elements of

the claimed invention.

Utility

Now let’s turn to utility. An important distinction to make between patents and other areas of

intellectual property is that in order to receive a patent, the invention must be useful. That’s

known as the utility standard. It’s not typically a road block that inventors run into since most

of the time, an invention is fueld by some need. After all, necessity is the mother of all

inventions. When there is a need and an invention fills that need, the utility standard is

essentially met.

However, there are limited instances in which an inventor develops a process or invents

something that he thinks may be useful at some point in the future, but hasn’t yet found a use

for it. These inventions will not be patentable no matter how unique or inventive. Remember,

the rule is for patents “To promote the useful arts and science.”

In a famous Supreme Court case, Brenner v Manson, 383 US 519 (1966), an inventor was

denied a patent on the process of producing a chemical compound because there was no

stated use for the compound. It was his contention that the chemical compound produced by

his new process was similar to another existing compound that was found to have “tumor-

inhibiting effects on mice.” The chemical compound in question, however, had not yet been

proven to have the same result, but was the subject of testing at the time of the patent

application. So, the question before the Court was whether a process that produced a chemical

compound could be patented where the resulting chemical compound had no stated use.

The utility standard requires that a process, machine, manufacture or composition of matter

must be useful before it will be patented. Here, the chemical compound in question was being

tested to determine if it could have tumor inhibiting properties at the time of the case.

However, at the time of filing, he thought the compound potentially had a use, but couldn’t

prove it at the time of filing.

The Court ultimately found that the process was not eligible for patent protection because it

had no stated use.

Non-obviousness

§103 of the Patent Act sets the important standard of non-obviousness. This section of the

Patent Act essentially requires that all new inventions, in order to be patented must be non-

obvious. This too sounds like an easy standard to understand and meet, right? Well, it’s much

more complicated than it sounds.

In determining the obviousness of a patent claim, courts must consider several factors. The test

basically asks whether the new invention would be obvious to a person having ordinary skill in

the art into which the invention falls. (We’ll talk more about claims in the section on Designing

Around. For now, just think of claims as the sections that detail the different parts of what is

being claimed in the invention)

In order to test for non-obviousness, the USPTO examiner must do several things; 1) determine

the scope and content of the prior art, 2) determine the differences between the prior art and

the claims sought to be patented in the application, and 3) determine the level of skill in the

pertinent art. That is the test the Supreme Court has used for non-obviousness since 1966

when it decided Graham v. John Deere Co., 383 U.S.1 (1966).

Essentially, obviousness requires that a person of ordinary skill in the art (a person who works

in the field or has a working knowledge in the field of the invention) would not find the

invention to be an obvious extension of what already exists in the prior art. In other words, the

inventor actually added something innovative and not just something evident or apparent,

when compared to the methods or creations already existing in the field.

Disclosure

Finally, an invention must be fully disclosed in order for a patent to be granted. The Patent Act

requires that the description found in the patent is sufficient enough that “one of ordinary skill

in the art” is able to practice the invention. This represents the side of patent law that is

concerned with conferring a benefit to society. In other words, in order to receive a 20 year

monopoly, the inventor must “teach” the world how to practice his or her invention. The

disclosure of an invention is also referred to as the “enablement” requirement.