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 i ...
is patentable if it meets the relevant legal conditions to be granted a
patent. 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", itsel ...
(i.e. at least some aspect of it must be new)
*
Non-obvious (in
United States patent law) or involve an
inventive step (in
European patent law)
*
Useful (in U.S. patent law) or be susceptible of
industrial application
In certain jurisdictions' patent law, industrial applicability or industrial application is a patentability requirement according to which a patent can only be granted for an invention which is susceptible of industrial application, i.e. for an in ...
(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
Sufficiency of disclosure or enablement is a patent law requirement that a patent application disclose a claimed invention in sufficient detail so that the person skilled in the art could carry out that claimed invention. The requirement is fu ...
", the "
unity of invention" or the "
best mode requirement".
Judging patentability is one aspect of the official
examination of a
patent application performed by a
patent examiner 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 or
patent attorney 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, any person can file an
opposition provided they act promptly after the patent is granted. In the United States, members of the public can initiate
reexamination 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
lawsuit
-
A lawsuit is a proceeding by a party or parties against another in the civil court of law. The archaic term "suit in law" is found in only a small number of laws still in effect today. The term "lawsuit" is used in reference to a civil actio ...
s 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
In United Kingdom patent law, a certificate of contested validity is an order usually made by the Patent Office, Patents Court (a division of the High Court) or Patents County Court after a patent infringement action in which the validity of the p ...
.
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. Later, a specific implementation of that concept might be patentable if it is not disclosed in the earlier patent (or any intervening
prior art), 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's thin carbon filament light bulb was a patentable improvement over the earlier patented
Woodward
A woodward is a warden of a wood. Woodward may also refer to:
Places
;United States
* Woodward, Iowa
* Woodward, Oklahoma
* Woodward, Pennsylvania, a census-designated place
* Woodward Avenue, a street in Tallahassee, Florida, which bisects the ca ...
and
Evans 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,
inventorship
In patent law, an inventor is the person, or persons in United States patent law, who contribute to the claims of a patentable invention. In some patent law frameworks, however, such as in the European Patent Convention (EPC) and its case law, no ...
is also regarded as a patentability criterion. It is a
constitutional requirement.
Congress's ability to grant patents is authorized only for the inventor. This was confirmed by
case law
Case law, also used interchangeably with common law, is law that is based on precedents, that is the judicial decisions from previous cases, rather than law based on constitutions, statutes, or regulations. Case law uses the detailed facts of a l ...
: "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 or MPEP. This is published by the
United States Patent and Trademark Office (USPTO) and is the reference manual used by both
patent examiners 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, 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 invention
He or HE may refer to:
Language
* He (pronoun), an English pronoun
* He (kana), the romanization of the Japanese kana へ
* He (letter), the fifth letter of many Semitic alphabets
* He (Cyrillic), a letter of the Cyrillic script called ''He'' in ...
is as fugitive, impalpable, wayward, and vague a phantom as exists in the whole
paraphernalia 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 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 in ''Harries v. Air King Prod. Co.'', 183 F.2d 158, 162 (
2d Cir. 1950).
[ US Court of Appeals for the Second Circuit]
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