Patent Eligibility Requirements FAQ

A small business needs to be familiar with the four forms of intellectual property. The four forms of intellectual property are trademarks, trade secrets, copyrights, and patents. The United States Patent and Trademark Office (USPTO) handles trademarks and patent registration. The U.S. Copyright Office handles copyrights. Business and contract law handle most breaches of trade secrets.

Patents can give inventors exclusive rights to their discoveries. Before applying for a patent, research your invention's patentability. Next, determine if the invention meets the patent eligibility requirements of the U.S. Patent and Trademark Office. This article covers the basics of patent eligibility requirements. It can help you figure out if a patent is worth your time, energy, and investment. It covers:

• What are the basic patentability requirements?
• What are the different types of patents?
• What is the basic process of receiving a patent?
• What is patentable subject matter?
• What does it mean for an invention to be 'novel'?
• How is something determined to be 'non-obvious'?
• What qualifies an invention as having 'utility' or being useful?
• What is ineligible subject matter for a patent?
• What resources are offered for small businesses?

What are the basic patentability requirements?

In the United States, there are five elements of patent eligibility. Patent subject matter eligibility requires that your invention falls within statutory categories known as “subject matter." These include compositions of matter, machines, manufacturers, or processes for patent protection.

Subject Matter Eligibility

The USPTO publishes the Manual of Patent Examining Procedures. This manual gives guidance on subject matter eligibility. This is useful for the patent system examination process. Under the Manual of Patent Examining Procedure, subject matter eligibility has two main criteria:

1. The claimed invention falls within one of the four statutory categories. Under 35 U.S.C. § 101, the categories are machines, processes, compositions of matter, and manufactures.
2. The claimed invention must meet the criteria of being patent-eligible subject matter. This means patent eligibility is available if it covers subject matter Congress defines as patentable. The USPTO defines patentable subject matter as anything "new and useful." The four types of subject matter are process, machine, manufacture, and composition of matter.

Four Basic Requirements

While machines or processes are patentable subject matter, the laws of nature are not. You can patent a machine for sorting items like packages but can't get one for rain or sunshine. Below are some basic requirements an invention needs for patent consideration:

1. The invention must have a "utility." This means it is useful. Note that this rule is only for utility patents.
2. The invention is "novel" or new.
3. The invention is "non-obvious." This means its use or function is not the next logical step of an already patented invention. Much of the argument between the USPTO and patent applicants revolves around the issue of non-obviousness.
4. The invention was not "disclosed" to the public before the application for the patent. For example, suppose you've written an article describing the invention before you apply for the patent. In that case, the USPTO may deny the application because you've already disclosed the patent. Their argument is that it is now public knowledge.

What are the different types of patents?

There are three general categories of patents. They are:

1. Utility patents
2. Design patents
3. Plant patents

Utility Patents

Utility patents are what most people associate with patents. This type is most frequently granted. Utility patents cover:

• Processes: Examples of this include business processes, computer software, and engineering methods
• Machines: Anything that performs a function. An example is a computer, tractor, or robotic kitty litter box
• Articles of manufacture: A catch-all category that covers anything manufactured. Some examples are gloves and pottery
• Composition of matter: Examples of this include pharmaceuticals, chemical compounds, and artificial genetic creations

A utility patent is the most powerful form of protection. It is also the most difficult to meet (see requirements below). Protection lasts 20 years from the filing date of your patent application.

Design Patents

The design patent protects non-functional, purely ornamental designs. Applicants don't have to prove utility for design patents. The design must be non-functional. Design patents are more easily issued, and last only 14 years (if granted from an application prior to May 13, 2015)  or 15 years (if granted from an application after May 13, 2015). They offer more limited protection than utility patents. For example, another design has to have a virtually identical design to infringe upon a patented design. An example of a design patent was the original curvy, glass Coca-Cola bottles.

Plant Patents

Plant patents protect asexually reproduced plants and sexually reproduced plant seeds. These typically arise from scientific experiments combining different plant species to create new plants and seeds. These are the least frequently granted patents. Plant patents last 20 years from the date of the application filing. An example is the Irish potato.

What is the basic process of receiving a patent?

Think of the patent process as a three-step process. Your invention, design, or process must have:

1. Patentable subject matter
2. Novelty or newness of an invention
3. Non-obviousness

This means, for granting a patent, the invention is enough of a departure from previously awarded patents. The patent will be granted if your invention can get through each step listed above.

What is patentable subject matter?

The patentable subject matter is any new and useful:

• Process
• Machine
• Manufactured article
• Matter composition
• The following is a non-exhaustive sample of patentable subject matter:
• Business processes
• Machines and electronics
• Fabrics and fabric designs
• Sporting equipment
• Medicines
• Computer hardware
• Computer software programs that have a "useful, concrete, and tangible" result
• Artificial bacteria (by contrast, naturally occurring organisms are not patentable)
• Human genes identified and isolated are patentable because they are not naturally occurring when isolated
• Business methods (e.g., FedEx's method of delivering packages overnight)

What does it mean for an invention to be 'novel'?

Prior to the patent application, another individual or the public cannot know of the invention. They also cannot have used it in the U.S. There cannot be a description in a printed publication or a patent in the U.S. or a foreign country either. If there's another invention before your patent application that incorporates all the same elements as your invention, then your invention is not novel. The USPTO will deny your patent.

Additionally, under the requirements of 35 U.S.C. § 102, an invention needs to have novelty. It cannot be the subject of a public disclosure more than a year before your patent application filing date. So, if any of the following three things happen with your invention, then you cannot apply for a patent:

• It is on sale
• It is in public use
• It has a printed publication one year before the application date

As a result of the "one-year rule," there is a possibility that you could destroy the novelty of your invention by delaying the application. For example, if you have someone manufacture or use your invention to determine if it's patent worthy and end up applying for it after a year, then the application may be denied as not being novel.

You should consult a patent attorney. There are different rules about "experimental" uses of inventions that could get you around the one-year rule.

How is something determined to be 'non-obvious'?

The non-obviousness test under 35 U.S.C. § 103 is the most difficult obstacle in the patent review process. The question the USPTO asks is: Knowing what's out there, is the invention an obvious step? If the invention combines several prior patents, it may be an obvious next step and, thus, denied.

The USPTO will look at "prior art." Prior art refers to information or evidence that is publicly available before the filing date of an application. The USPTO determines whether the invention is "obvious to a person having ordinary skill in the art." There must be an inventive leap. In other words, the invention must distance itself from prior art.

In addition to examining prior art, the USPTO also looks to secondary considerations. This helps shed light on the level of obviousness at the time of the invention. For example, if your invention is a commercial success, that may show that there was nothing else in the market like your invention. Others failed to achieve the same result. If there was a long period between the relevant prior art and the patent at issue, it might show that the patent needs to be more obvious. Otherwise, there would have been other similar products that tried to fill the void.

Non-obviousness is the most contested part of the patent review process because it's the most subjective. One patent examiner may look at an invention and think it's the next logical step from the prior art. In contrast, another examiner may look at the same prior art and consider the invention shows an imaginative leap and is not obvious.

What qualifies an invention as having 'utility' or being useful?

Only utility patent applicants must show the invention's usefulness. All utility patents must show that they are useful now, not just potentially useful. The patent application must at least have a sound theoretical basis for being useful. For example, a patent for a process that speeds a manufacturing line based on past proven successful methods can get granted. Yet a drug patent is not granted because the effectiveness has no scientific backing.

What is ineligible subject matter for a patent?

Abstract ideas are generally considered ineligible subject matter unless applied tangibly and practically. The Supreme Court's 2016 court decision establishing the Alice/Mayo test and later Federal Circuit Court decisions created the framework of patent eligibility jurisprudence.

The Alice/Mayo test established that three categories are abstract. These three categories are:

• Mathematical concepts
• Mental processes
• Methods of organizing human activity

What resources are offered for small businesses?

The USPTO has partnered with the Small Business Administration (SBA) to provide educational resources for small businesses. This includes information and resources for those looking to learn more about their patent rights. For more information, you can also head over to FindLaw's Patents section.

Discuss Patent Eligibility Requirements With an Attorney

As an entrepreneur trying to secure a patent, you may face issues like patent maintenance fees or opposing patent claims. If you have more questions on patent-related matters, such as patent infringement, patent prosecution, or general patent law, you should speak with an intellectual property lawyer.