Patent Standards

A patent is a document issued by the federal government that grants to its owner legally enforceable rights to exclude others from making, using, selling, importing, or offering for sale the claimed invention in the United States.  There are many reasons a company may seek to obtain patent protection for their technology.

Most companies and inventors seek a patent to obtain the actual or potential commercial advantages that go along with the right to exclude others.  In addition to the potential for an exclusive market position or licensing income, a patent often lends business credibility to start-up ventures and can open doors to both technical assistance and financing necessary to bring a new product to market.  An improvement patent may also provide the barter necessary to cross-license any basic patents held by others which block the path to market. Finally, obtaining broad patent coverage over all the potential possible ways to create a particular invention serves to prevent other individuals and companies from being able to enter a particular market.  The patent holder has the ability to enjoin or permanently stop an infringer from making or using any infringing products.  However, the responsibility to monitor potential infringers’ products rests with the patent holder, not the U.S. Patent Office.  Obtaining a patent then, represents both significant technical achievement and a long-term commitment to protect the rights granted the holder by the government.

A patent does not give the inventor the right to practice the invention.  The inventor can make his invention only if by so doing he does not also practice the invention of an earlier unexpired patent.  The type of patent filed depends upon the subject matter of the invention.  If the invention is a product, process, apparatus or composition, including living matter (which includes genetically engineered bacteria or plants), a utility patent should be filed.  If the invention falls within certain criteria for distinct and new varieties of plant, a plant patent will be filed.  Finally, if the invention is an ornamental design for an article of manufacture, a design patent should be filed.  The format and requirements for each of these patents differ somewhat by statute, but the general principles governing whether a particular invention are the same.

A patent can only be issued if a timely application is filed that adequately describes a novel, useful, and nonobvious invention of proper subject matter.  Provided the claimed invention meets these standards, a patent generally issues.

To be timely, an application must be filed within one year of certain acts (by the inventor or others) which place the invention in the hands of the public, i.e., patented or published anywhere in the world, on sale or in public use in this country. This one-year grace period, however, is not available in most foreign countries.  A U.S. inventor who wants to obtain corresponding foreign patents must first file an application in the U.S. before any divulgation, whether in written or oral form, of the invention to the public.  In addition, if a United States patent application is filed, it may be necessary to file foreign applications within one year of the U.S. filing date.  Such is the case if the inventor needs the foreign application to be given the same filing date as the U.S. application.  Provided the application is timely, two additional hurdles remain to be cross, the standards of novelty and nonobviousness.

The criteria used to determine whether an invention is novel are found in statute 35 U.S.C. § 102.  An invention is considered novel if it has not been previously done (e.g., if no patent or pre-invention dated reference discloses each and every element of the proposed invention).  Other statutory provisions bar patenting of inventions that have been patented in a foreign country or described by a written publication in the U.S. or a foreign country more than one year prior to the filing of a U.S. patent application.  Another provision bars patenting of inventions publicly used or sold in the U.S. more than one year prior to the filing of an application.  The statutes, and the court decisions that interpret them, make it important to consult with a patent attorney as soon as practical when patenting of an invention is desired to help avoid some of pitfalls that catch the unwary and may forever bar the patenting of the invention.  While the criteria outlined in the statutes barring patentability may appear harsh at first, they are intended to speed the benefits that advances in technology bring to society at large.  The process seeks to avoid the keeping of “secrets” which could have larger benefit if disclosed.  Therefore, the statutes discussing the novelty standard contains strong incentives to use the patent process, or lose patentability altogether.

The most difficult requirement of patentability to overcome is usually the requirement that the concept not be obvious to one having “ordinary skill” in the relevant field of art.  The statute that discusses the criteria that determine the obviousness of an invention is 35 U.S.C. § 103.  During the examination process, the Examiner must look at all of the relevant references available in the relevant field of art to determine whether any one or any combination of references discloses the concept sufficiently so as to render it obvious. When the Patent Examiner is making the initial determination regarding obviousness, it is appropriate within certain guidelines for the Examiner to combine features from several references in holding that a particular invention is obvious.  Thus, while one reference may not contain all of the features of a particular invention, a combination of references could show all of the features, thus making the invention unpatentable.  The Examiner is required to use this combination of references to establish an initial case for obviousness of the invention.

The Supreme Court in 2007 greatly broadened the number of rationales that can be used to find obviousness.  For example, the Court has stated that a combination of known elements according to known methods to produce predictable results is obvious.  The Court has also stated that if there exists a finite number of possibilities, it would be obvious for one of ordinary skill in the art to try all of them until they find one that works (the obvious to try rationale).  Also, the Court has stated that provided there exists a teaching or suggestion in one or both of two or more references to combine their teachings, if the combination creates all of the elements of the invention and has a reasonable expectation of success, the invention is obvious (the teaching-suggestion-motivation rationale).  In addition, please note that when a Patent Examiner is making the initial determination regarding patentability, it is appropriate to combine features from several references in holding that a particular invention is obvious.  Thus, while one reference may not contain all of the features of a particular invention, a combination of references could show all of the features, thus making the invention unpatentable.

In view of at least seven different rationales that could be selected by an Examiner when a patent application is examined, it is difficult to predict which one an Examiner might select. But as an example, under a common rationale (the teaching-suggestion-motivation rationale) a Patent Examiner must demonstrate three basic criteria.  First, there must be some suggestion or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings.  Second, there must be a reasonable expectation of success.  Third, the cited prior art reference must teach or suggest all of the claim limitations.  Furthermore, the suggestion to make the claimed combination and the reasonable expectation of success must both be found in the prior art, and not based upon the type of hindsight analysis that occurs only after a Patent Examiner reviews the applicant’s invention.  The Examiner, cannot, for example, look at the invention, dissect it into component parts, and then find a numerous collection of references that individually teach each part and then declare that the invention is obvious.  The analysis must be performed by looking at the invention and references as a whole.  In other words, looking at references A and B, would combining their teachings produce the whole of what is claimed to be the invention?

As another example, under the predictable results rationale, to prepare a post-KSR rebuttal to an obviousness rejection, the focus of the rebuttal must be primarily based on whether or not the inventor or inventors would be able to predict that the invention would work in light of the teachings in the art at the time of the invention.  To do this, the prior art must teach all of the elements of the invention; if it does not, then the USPTO must show that the inventor would know of the missing element based on common sense or on information known or readily available to one of ordinary skill in the art.