Qualifying for a Patent

From the Nolo eCommerce Center

Learn whether your invention is eligible for patent protection.

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What types of inventions can be patented?

The PTO issues three different kinds of patents: utility patents, design patents and plant patents.

To qualify for a utility patent – by far the most common type of patent – an invention must be:

  • a process or method for producing a useful, concrete and tangible result (such as a genetic engineering procedure, an investment strategy, computer software or a process for conducting e-commerce on the Internet.)
  • a machine (usually something with moving parts or circuitry, such as a cigarette lighter, sewage treatment system, laser or photocopier)
  • an article of manufacture (such as an eraser, tire, transistor or hand tool)
  • a composition of matter (such as a chemical composition, drug, soap or genetically altered lifeform), or
  • an improvement of an invention that fits within one of the first four categories.

Often, an invention will fall into more than one category. For instance, a laser can usually be described both as a process (the steps necessary to produce the laser beam) and a machine (a device that implements the steps to produce the laser beam). Regardless of the number of categories into which a particular invention fits, it can receive only one utility patent.

If an invention fits into one of the categories described above, it is known as “statutory subject matter” and has passed the first test in qualifying for a patent. But an inventor’s creation must overcome several additional hurdles before the PTO will issue a patent. The invention must also:

  • have some utility, no matter how trivial.
  • be novel (that is, it must be different from all previous inventions in some important way).
  • be nonobvious (a surprising and significant development) to somebody who understands the technical field of the invention.

For design patents, the law requires that the design be novel, nonobvious and nonfunctional. For example, a new shape for a car fender, bottle or flashlight that doesn’t improve its functionality would qualify.

Finally, plants may qualify for a patent if they are both novel and nonobvious. Plant patents are issued less frequently than any other type of patent.

More Examples of Patentable Subject Matter

The following items are just some of the things that might qualify for patent protection: biological inventions; business methods; carpet designs; new chemical formulas, processes or procedures; clothing accessories and designs; computer hardware and peripherals; computer software; containers; cosmetics; decorative hardware; e-commerce techniques; electrical inventions; electronic circuits; fabrics and fabric designs; food inventions; furniture design; games (board, box and instructions); housewares; Internet innovations; jewelry; laser light shows; machines; magic tricks or techniques; mechanical inventions; medical accessories and devices; medicines; musical instruments; odors; plants; recreational gear; and sporting goods (designs and equipment).

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What types of inventions are not eligible for patent protection?

Some types of inventions will not qualify for a patent, no matter how interesting or important they are. For example, mathematical formulas, laws of nature, newly discovered substances that occur naturally in the world, and purely theoretical phenomena – for instance, a scientific principle like superconductivity without regard to its use in the real world – have long been considered unpatentable. This means, for example, that you can’t patent a general mathematical approach to problem solving or a newly discovered pain killer in its natural state.

In addition, the following categories of inventions don’t qualify for patents:

  • processes done entirely by human motor coordination, such as choreographed dance routines or a method for meditation,
  • most protocols and methods used to perform surgery on humans
  • printed matter that has no unique physical shape or structure associated with it
  • unsafe new drugs
  • inventions useful only for illegal purposes, and
  • non-operable inventions, including “perpetual motion” machines (which are presumed to be non-operable because to operate they would have to violate certain bedrock scientific principles).

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Can computer software qualify for patent protection?

Yes. Even though you can’t get a patent on a mathematical formula per se, you may be able to get protection for a specific application of a formula. Thus, software may qualify for a patent if the patent application produces a useful, concrete and tangible result. For example, the PTO will not issue a patent on the complex mathematical formulae that are used in space navigation, but will grant a patent for the software and machines that translate those equations and make the space shuttle go where its supposed to go.

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Is it possible to obtain a patent on forms of life?

Form of life, from bacteria to cows, that are genetically altered to have new and useful characteristics or behaviors, may qualify for utility patents. Also patentable are sequences of DNA that have been created to test genetic behaviors and the methods used to accomplish this sequencing. As a general rule, you can’t patent a human being. However, with the advent of cloning techniques and the ability to mix genes across species – for example, the human immune system genetic code transplanted into a mouse for testing purposes – the question of what a human being is, and what life forms can and cannot be patented promises to be a subject of fierce debate for years to come.

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What makes an invention “novel?”

In the context of a patent application, an invention is considered novel when it is different from all previous inventions (called “prior art”) in one or more of its constituent elements. When deciding whether an invention is novel, the PTO will consider all prior art that existed as of the date the inventor files a patent application on the invention. If prior art is uncovered, the invention may still qualify for a patent if the inventor can show that he or she conceived of the invention before the prior art existed and was diligent in building and testing the invention or filing a patent application on it.

An invention will flunk the novelty test if it was described in a published document or put to public use more than one year prior to the date the patent application was filed. This is known as the one-year rule.

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When is an invention considered “nonobvious?”

To qualify for a patent, an invention must be nonobvious as well as novel. An invention is considered nonobvious if someone who is skilled in the particular field of the invention would view it as an unexpected or surprising development.

For example, in August of 1998, Future Enterprises invents a portable high quality virtual reality system. A virtual reality engineer would most likely find this invention to be truly surprising and unexpected. Even though increased portability of a computer-based technology is always expected in the broad sense, the specific way in which the portability is accomplished by this invention would be a breakthrough in the field and thus unobvious. Contrast this with a bicycle developer who uses a new, light but strong metal alloy to build his bicycles. Most people skilled in the art of bicycle manufacturing would consider the use of the new alloy in the bicycle to be obvious, given that lightness of weight is a desirable aspect of high-quality bicycles.

Knowing whether an invention will be considered nonobvious by the PTO is difficult because it is such a subjective exercise – what one patent examiner considers surprising, another may not. In addition, the examiner will usually be asked to make the nonobviousness determination well after the date of the invention, because of delays inherent in the patent process. The danger of this type of retroactive assessment is that the examiner may unconsciously be affected by the intervening technical improvements. To avoid this, the examiner generally relies only on the prior-art references (documents describing previous inventions) that existed as of the date of invention.

As an example, assume that in 2001, Future Enterprises’ application for a patent on the 1998 invention is being examined in the Patent and Trademark Office. Assume further that by 2001, you can find a portable virtual reality unit in any consumer electronics store for under $200. The patent examiner will have to go back to the time of the invention to fully appreciate how surprising and unexpected it was when it was first conceived, and ignore the fact that in 2001 the technology of the invention is very common.

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What makes an invention “useful?”

Patents may be granted for inventions that have some type of usefulness (utility), even if the use is humorous, such as a musical condom or a motorized spaghetti fork. However, the invention must work – at least in theory. Thus, a new approach to manufacturing superconducting materials may qualify for a patent if it has a sound theoretical basis – even if it hasn’t yet been shown to work in practice. But a new drug that has no theoretical basis and which hasn’t been tested will not qualify for a patent.

Remember that to qualify for a design or plant patent, the other two types of patents obtained in the U.S., the inventor need not show utility.

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