In short, you must disclose your invention to the public, and satisfy certain legal requirements.  In the United States, the disclosure requirement is satisfied by filing a non-provisional patent application with the United States Patent and Trademark Office (USPTO).  Most non-provisional patent applications are published by the USPTO, although it may be possible to file an application without having it publish.  Furthermore, if an application matures into a US patent, that US patent will be published.  This is how the public benefits from the disclosure of your invention.  Specifically, the public gets to see the disclosure of the invention, the blueprint for how the invention works.  In return, once the non-provisional patent application matures into a patent, the patent owner is granted a monopoly on his or her invention, as covered by the claimed of the issued patent.  Stated differently, the scope of the invention that is defined by claims at the end of the patent is a protectable space that the owner of the patent owns for a limited time (e.g., 20 years from the filing date for utility applications in the US).  As such, if a competitor of that patent owner enters the protectable space, e.g., by selling a competing product that falls within the scope of the claims of the patent owner’s patent, that patent owner could sue for patent infringement, stop the competitor from selling the competing product, and potentially collect damages.  

In order to mature the non-provisional patent application into a patent, certain statutory requirements must be satisfied.  The most basic of these requirements are that the invention in the application is patent eligible (35 USC 101), novel (35 USC 102), nonobvious (35 USC 103), and is in compliance with the formal requirements of 35 USC 112.  

Regarding patent eligibility, 35 USC 101 requires that an invention fit into one of four statutory categories.  Specifically, an invention, as defined by the claims, must either be a composition of matter, an article of manufacture, a machine, or a process.  If an invention does not fit into one of these four categories, a patent examiner examining the patent application will reject the claims under 35 USC 101.  Additionally, courts have determined that certain subject matter is per se not patent eligible, namely laws of nature, algorithms, mathematical formulas, and abstract ideas.  If a patent examiner determines that the claims in a patent are directed to, for example, an algorithm, he or she will reject them under 35 USC 101 as being directed to patent ineligible subject matter.  

Regarding novelty, 35 USC 102 essentially requires that each and every element of a claim of a patent cannot be taught in a single prior art reference (e.g., piece of existing technology).  In practice, this often presents as a patent examiner showing to an applicant a piece of existing prior art (e.g., often a previously issued patent or patent application publication) and making a claim that every element of the applicant’s claim or claims is taught in that one single reference.  When reviewing the examiner’s assertion, patent attorneys are tasked with carefully reviewing the prior art reference and determining whether each element of the claims is found in that reference.  If that is the case, obtaining a patent on the as-filed claims will not be a viable option for the inventor.  However, at this stage in prosecution applicants have the opportunity to amend the language in their claims.  This will change the scope of protection being sought, but also, hopefully, result in an amended scope of coverage that is not entirely found in one single prior art reference.  

For instance, if an initial claim was directed to a cellular telephone, and a patent examiner rejected that claim under 35 USC 102 to a reference directed to an early model flip phone, amending the claim language to require that the cellular telephone have a touch screen interface would take the claim outside of the scope of the flip phone reference, as early model flip phones, to the best of my knowledge, did not have touch screen interfaces.  Amendments made in this manner must not go outside of the scope of the initial disclosure or an examiner will not allow them to be made, asserting they are new matter.  For the cell phone example, this means that the initial disclosure (e.g., the as-filed patent application) must discuss touch screen interfaces as something that is contemplated by the invention.  Additionally, making narrowing amendments can often cede patent rights.  For example, if a patent issues on the cellular telephone with a touch screen interface, the patent owner may be precluded during subsequent litigation from broadly interpreting what touch screen interface means, due to the amendment made during prosecution with the patent examiner.  As such, claims that are not amended are preferable to claims that are (e.g., get it right the first time).

Regarding obviousness, 35 USC 103 provides, “A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.”

This statute grants patent examiners authority to assert that although not every feature of an applicant’s claimed invention is found in one single reference (e.g., 35 USC 102), the features that are missing from the main reference can readily be found in at least one other reference.  35 USC 103 is often an inventor’s main difficulty in getting a Notice of Allowance (e.g. an indication from a patent examiner that a patent is in order) from a patent examiner.  Overcoming it can often be done through amendment, argument based on case law, affidavits from experts in the relevant art that the invention is not obvious, and also secondary considerations.  Secondary considerations may include evidence of how commercially successful the invention is, praise by others, copying of the invention by competitors, and the failure of others to develop the invention.

Regarding 35 USC 112, the best way to ensure that a patent examiner does not reject the application on these grounds is to either hire a good patent attorney, or become very familiar with standard patent procedures.  For the claims, this statute requires them to be in a very particular form, and if they are not, the examiner will reject them, costing time and money.  For example, something as simple as using the word “a” in front of an element of a claim instead of the word “the” will draw a rejection under this statute.  A small oversight in the disclosure that refers to two different elements with the same reference number will draw a rejection under this statute.  Writing something in the claims that is not supported by the disclosure will draw a rejection under this statute.  Having too many words in the abstract of the application will draw a rejection under this statute.  This is not a difficult statute to satisfy in any regard, but it unquestionably requires insight into the form that patent examiners require.  

Once a patent examiner has determined that an applicant’s patent application satisfies 35 USC 101, 102, 103, and 112, he or she will mail to the applicant a document called a Notice of Allowance, which is an indication that all requirements have been satisfied for patenting.  Subsequent payment of an issue fee by the applicant will result in the patent being issued by the USPTO.

This article was authored by John P. Powers, and is intended to keep readers current on matters affecting intellectual property and is not intended to be legal advice. If you have any questions about its content, please leave a comment below.

©John P. Powers, 2020, all rights reserved.