Rules for Patents

The general rules for patents and patent protection is laid out by the U.S. Patent Act in one line. It essentially says that anyone who invents or discovers a new and useful product or process, or anyone that makes a non-obvious improvement to that product or process, is allowed to obtain a patent.

Requirements of a Patentable Idea

There are four general requirements that a person should be aware of if he or she wants to patent an idea. For a product or process to be patentable, it must be:

  • Statutory
  • New
  • Useful
  • Non-obvious

Statutory Requirement

The statutory requirement essentially means that an invention is only patentable if it falls under one of the broad categories listed in Section 101 of the U.S. Patent Act. That section states that “processes, machines, articles of manufacture, and compositions of matter” are patentable.

If an invention does not fall under one of those four categories, it cannot be patented, even if it meets the other three requirements of a patentable idea. For example, some inventions that are not patentable are:

  • Music
  • Literary works
  • Waves or signals

Newness Requirement

An invention can be patentable only if it is considered novel. An invention will not be given a patent if there is already a similar invention that has had some public disclosure. To determine if a public disclosure has been made, the USPTO or a court will look to the following factors:

  • Public awareness of the invention before the patent application was filed by the applicant
  • If the invention was ever described in a public document prior to the patent application
  • If the invention was already described in a patent application or already has a patent

Usefulness Requirement

The third requirement to a patentable invention is that is must be considered useful. The invention must have some value and utility. This general requirement is typically met easily.

Non-Obvious Requirement

The final requirement of a patentable invention is that it must have improved upon a similar invention in a way that would not have been obvious to an ordinary person in the same field when the original invention was patented. In order to make this determination, a patent agent at the USPTO will consider all similar patented inventions. If all aspects of the invention subject to the application can be found in a prior patent, the patent agent will reject the patent on the grounds that it fails to meet the newness requirement.

If there is not one patent that contains all aspects of the invention subject to the application, then the patent agent will look to a combination of similar patents to see if the features of the new application can be found by combining all similar patents. If the features of the invention can be found by combining similar patents, then the patent agent will reject the application as an obvious improvement to prior patents. Once the patent agent rejects an application based on the non-obvious requirement, he or she must disclose the reason and why they combined patents. This type of rejection by comparing multiple patents is very common in patent applications.

How to Start the Process of Filing a Patent

Once an inventor has filed a patent application, the process can take anywhere from 18 to 24 months and can cost anywhere between $10,000 and $25,000. Patent applications are not made public right away. The U.S. Patent and Trademark Office (PTO) will typically publish a patent application within 18 months of when it was first filed. Consequently, a person has no direct way of knowing if there are similar patents that are also in the process of being filed.

A cheaper way to start the patent process is to apply for a “provisional patent.” A provisional patent gives an inventor up to one year to file a patent application with the U.S. PTO. A provisional patent application is less formal and does not need to meet all of the requirements of a full application. It does, however, still need to contain a description of your invention.

If you need help with your patent application, you can post your legal need on UpCounsel’s marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law, and average 14 years of legal experience, including work with, or on behalf of companies like Google, Menlo Ventures, and Airbnb.