Within the context of a
national or
multilateral body of
law, an
invention
An invention is a unique or novel device, method, composition, idea or process. An invention may be an improvement upon a machine, product, or process for increasing efficiency or lowering cost. It may also be an entirely new concept. If an ...
is patentable if it meets the relevant legal conditions to be granted a
patent
A patent is a type of intellectual property that gives its owner the legal right to exclude others from making, using, or selling an invention for a limited period of time in exchange for publishing an enabling disclosure of the invention."A ...
. By extension, patentability also refers to the substantive conditions that must be met for a patent to be held valid.
Requirements
The patent laws usually require that, for an invention to be patentable, it must be:
*
Patentable subject matter, i.e., a kind of subject-matter eligible for patent protection
*
Novel
A novel is a relatively long work of narrative fiction, typically written in prose and published as a book. The present English word for a long work of prose fiction derives from the for "new", "news", or "short story of something new", itself ...
(i.e. at least some aspect of it must be new)
*
Non-obvious (in
United States patent law
Under United States law, a patent is a right granted to the inventor of a (1) process, machine, article of manufacture, or composition of matter, (2) that is new, useful, and non-obvious. A patent is the right to exclude others, for a limited ...
) or involve an
inventive step (in
European patent law
European patent law covers a range of legislations including national patent laws, the Strasbourg Convention of 1963, the European Patent Convention of 1973, and a number of European Union directives and regulations. For some states in Eastern ...
)
*
Useful (in U.S. patent law) or be susceptible of
industrial application (in European patent law)
Usually the term "''patentability''" only refers to "substantive" conditions, and does not refer to formal conditions such as the "
sufficiency of disclosure", the "
unity of invention
In most patent laws, unity of invention is a formal administrative requirement that must be met by a patent application to become a granted patent. Basically, a patent application can relate only to one invention or a group of closely related in ...
" or the "
best mode requirement".
Judging patentability is one aspect of the official
examination of a
patent application
A patent application is a request pending at a patent office for the grant of a patent for an invention described in the patent specification and a set of one or more claims stated in a formal document, including necessary official forms and re ...
performed by a
patent examiner A patent examiner (or, historically, a patent clerk) is an employee, usually a civil servant with a scientific or engineering background, working at a patent office. Major employers of patent examiners are the European Patent Office (EPO), the U ...
and may be tested in post-grant patent litigation.
Prior to
filing a patent application,
inventor
An invention is a unique or novel device, method, composition, idea or process. An invention may be an improvement upon a machine, product, or process for increasing efficiency or lowering cost. It may also be an entirely new concept. If an ...
s sometimes obtain a
patentability opinion from a
patent agent
A patent attorney is an attorney who has the specialized qualifications necessary for representing clients in obtaining patents and acting in all matters and procedures relating to patent law and practice, such as filing patent applications and o ...
or
patent attorney
A patent attorney is an attorney who has the specialized qualifications necessary for representing clients in obtaining patents and acting in all matters and procedures relating to patent law and practice, such as filing patent applications and op ...
regarding whether an invention satisfies the substantive conditions of patentability.
Opposition and reexamination
Many national and regional patent offices provide procedures for reconsidering whether or not a given patent is valid after grant. Under the
European Patent Convention
The European Patent Convention (EPC), also known as the Convention on the Grant of European Patents of 5 October 1973, is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to ...
, any person can file an
opposition
Opposition may refer to:
Arts and media
* ''Opposition'' (Altars EP), 2011 EP by Christian metalcore band Altars
* The Opposition (band), a London post-punk band
* '' The Opposition with Jordan Klepper'', a late-night television series on Com ...
provided they act promptly after the patent is granted. In the United States, members of the public can initiate
reexamination
In United States patent law, a reexamination is a process whereby anyone—third party or inventor—can have a U.S. patent reexamined by a patent examiner to verify that the subject matter it claims is patentable. To have a patent reexamined, ...
proceedings. Japan provides similar options. In India, the Patent Act provides for a dual opposition system i.e. pre-grant opposition as well as post grant opposition. While a pre-grant opposition may be filed by any person, the post grant opposition may only be filed by a person interested in the field of invention.
Members of the public can also initiate
lawsuits in the courts of various nations to have patents declared invalid.
United Kingdom patents can be reviewed by way of a
non-binding opinion issued by the Patent Office, or by formal applications for revocation before the Patent Office or the Court. If the patent survives a revocation action, this fact is noted for future reference by way of a
Certificate of contested validity.
Infringement
The fact that an invention is patentable or even patented does not necessarily mean that use of the invention would not also
infringe another patent. The first patent in a given area might include a broad claim covering a general inventive concept if there is at that point no relevant
prior art
Prior art (also known as state of the art or background art) is a concept in patent law used to determine the patentability of an invention, in particular whether an invention meets the novelty and the inventive step or non-obviousness criteria ...
. Later, a specific implementation of that concept might be patentable if it is not disclosed in the earlier patent (or any intervening
prior art
Prior art (also known as state of the art or background art) is a concept in patent law used to determine the patentability of an invention, in particular whether an invention meets the novelty and the inventive step or non-obviousness criteria ...
), but nevertheless still falls within the scope of the earlier claim (covering the general concept). This means that the later inventor must obtain a license from the earlier inventor to be able to exploit their invention. At the same time, the earlier inventor might want to obtain a license from the later inventor, particularly if the later invention represents a significant improvement in the implementation of the original broad concept. In this case, the two enter into a cross license.
Thomas Edison
Thomas Alva Edison (February 11, 1847October 18, 1931) was an American inventor and businessman. He developed many devices in fields such as electric power generation, mass communication, sound recording, and motion pictures. These inventi ...
's thin carbon filament light bulb was a patentable improvement over the earlier patented
Woodward and
Evans
Evans may refer to:
People
*Evans (surname)
*List of people with surname Evans
Places United States
*Evans Island, an island of Alaska
*Evans, Colorado
*Evans, Georgia
*Evans County, Georgia
*Evans, New York
*Evans Mills, New York
*Evans City, ...
thick carbon filament light bulb. Thomas Edison bought the Woodward patent for $5,000 US before he began his development work so that Woodward would not be able to later sue him for patent infringement after Edison became commercially successful.
National laws
United States
Under
United States patent law
Under United States law, a patent is a right granted to the inventor of a (1) process, machine, article of manufacture, or composition of matter, (2) that is new, useful, and non-obvious. A patent is the right to exclude others, for a limited ...
,
inventorship is also regarded as a patentability criterion. It is a
constitutional
A constitution is the aggregate of fundamental principles or established precedents that constitute the legal basis of a polity, organisation or other type of entity and commonly determine how that entity is to be governed.
When these prin ...
requirement.
Congress
A congress is a formal meeting of the representatives of different countries, constituent states, organizations, trade unions, political parties, or other groups. The term originated in Late Middle English to denote an encounter (meeting of ...
's ability to grant patents is authorized only for the inventor. This was confirmed by
case law: "Inventorship is indeed relevant to patentability under 35 U.S.C. § 102(f), and patents have in the past been held unenforceable for failure to correctly name inventors in cases where the named inventors acted in bad faith or with deceptive intent."
Details on patentability in the U.S. can be found in the
Manual of Patent Examining Procedure
The ''Manual of Patent Examining Procedure'' (MPEP) is published by the United States Patent and Trademark Office (USPTO) for use by patent attorneys and agents and patent examiners. It describes all of the laws and regulations that must be follo ...
or MPEP. This is published by the
United States Patent and Trademark Office
The United States Patent and Trademark Office (USPTO) is an agency in the U.S. Department of Commerce that serves as the national patent office and trademark registration authority for the United States. The USPTO's headquarters are in Alex ...
(USPTO) and is the reference manual used by both
patent examiner A patent examiner (or, historically, a patent clerk) is an employee, usually a civil servant with a scientific or engineering background, working at a patent office. Major employers of patent examiners are the European Patent Office (EPO), the U ...
s and patent agents/attorneys.
Chapter 2100 in particular, gives a comprehensive overview of the standards for patentability, a discussion of the related case law, and guidance on how to overcome an examiner's rejection of a given set of claims.
In the United States, the patent grant is presumptive, e.g. a patent shall issue unless the patent statutes preclude the grant. In other words, the burden is on the Patent Office to prove why a patent should not be granted. Once a patent issues, however, it is presumed valid and a court may declare it invalid only on the basis of clear and convincing evidence.
Europe
Terminology in Europe, within the member states of the
European Patent Organisation
The European Patent Organisation (sometimes abbreviated EPOrg in order to distinguish it from the European Patent Office, one of the two organs of the organisation) is a public international organisation created in 1977 by its contracting states t ...
, is slightly different from U.S. terminology. While in the U.S. all patent applications are considered to cover inventions automatically, in Europe a patent application is first submitted to a test whether it covers an invention at all: the first out of four tests of (the other three being novelty, inventive step, and industrial applicability). So an "invention" in European legal terminology is similar to "patentable subject-matter" in the American system. Articles 52-57 of the European Patent Convention are concerned with patentability.
India
Under the Indian Patent Act (1970), "inventions" are defined as a new product or process involving an inventive step and capable of industrial application. Thus the patentability criteria largely involves novelty, inventive step and industrial application or usability of the invention. In addition, section 3 of the Patent Act, 1970, also provides a list of non-patentable inventions for e.g. inventions that are frivolous or contrary to well established to natural laws.
Quotes
:''
he question whether there is a patentable inventionis as fugitive, impalpable, wayward, and vague a phantom as exists in the whole
paraphernalia
Paraphernalia most commonly refers to a group of apparatus, equipment, or furnishing used for a particular activity. For example, an avid sports fan may cover their walls with football and/or basketball paraphernalia.
Historical legal term
In l ...
of legal concepts. It involves, or it should involve, as complete a reconstruction of the art that preceded it as is possible. The test of invention is the originality of the discovery, and discovery depends upon the mental act of conceiving the new combination, for substantially every invention is only a combination. Nothing is more illusory, as nothing is more common, than to assume that this can be measured objectively by the magnitude of the physical readjustments required. Courts never tire, or at least in earlier times they never did, of expatiating upon the freshness of insight which observes a little, but fruitful, change which had theretofore escaped detection by those engaged in the field. When all is said, we are called upon imaginatively to project this act of discovery against a
hypostatized
Hypostasis (Greek: ὑπόστασις, ''hypóstasis'') is the underlying state or underlying substance and is the fundamental reality that supports all else. In Neoplatonism the hypostasis of the soul, the intellect ('' nous'') and "the one" was ...
average practitioner, acquainted with all that has been published and all that has been publicly sold. If there be an issue more troublesome, or more apt for litigation than this, we are not aware of it. (...)''
::- US Judge
Learned Hand
Billings Learned Hand ( ; January 27, 1872 – August 18, 1961) was an American jurist, lawyer, and judicial philosopher. He served as a federal trial judge on the U.S. District Court for the Southern District of New York from 1909 to 1924 a ...
in ''Harries v. Air King Prod. Co.'', 183 F.2d 158, 162 (
2d Cir.
The United States Court of Appeals for the Second Circuit (in case citations, 2d Cir.) is one of the thirteen United States Courts of Appeals. Its territory comprises the states of Connecticut, New York and Vermont. The court has appellate jur ...
1950).
US Court of Appeals for the Second Circuit
The United States Court of Appeals for the Second Circuit (in case citations, 2d Cir.) is one of the thirteen United States Courts of Appeals. Its territory comprises the states of Connecticut, New York and Vermont. The court has appellate jur ...
Harries et al. v. Air King Products Co., Inc, 183 F.2d 158 (2d Cir. 1950)
accessed 16 November 2022
See also
*
Idea-expression divide, a copyright law concept often
rroneouslyraised in the patent context.
References
External links
Manual of Patent Examining Procedure, Chapter 2100, "Patentability" from the USPTO web site
* "Patentability"
{{USArticleI
Patent law