Patent Your Idea

AuthorHouse™

1663 Liberty Drive

Bloomington, IN 47403

www.authorhouse.com

Phone: 1-800-839-8640

© 2011 Ash Tankha, Lynn Bout, Shirley Fernandes, Swaroop K.S.. All rights reserved.

No part of this book may be reproduced, stored in a retrieval system, or transmitted by any means without the written permission of the author.

First published by AuthorHouse 5/12/2011

ISBN: 978-1-4520-1100-4 (sc)

ISBN: 978-1-4520-1101-1 (e)

Library of Congress Control Number: 2010918912

Any people depicted in stock imagery provided by Thinkstock are models, and such images are being used for illustrative purposes only.

Certain stock imagery © Thinkstock.

Because of the dynamic nature of the Internet, any Web addresses or links contained in this book may have changed since publication and may no longer be valid. The views expressed in this work are solely those of the author and do not necessarily reflect the views of the publisher, and the publisher hereby disclaims any responsibility for them.

Contents

1. INTRODUCTION TO PATENTS

1.1. COMMON TERMS AND DEFINITIONS

1.1.1. Invention

1.1.2. First to File

1.1.3. Patent

1.1.4. Term of the Patent

1.1.5. Patentable Invention

1.1.6. Prior Art

1.1.7. Prior Art Reference

1.1.8. Patentee

1.1.9. Patent Applicant

1.1.10. Assignee

1.1.11. Patent Infringement

1.1.12. Statutory Subject Matter

1.1.13. Types of Patents

1.1.14. Patent Pending

1.2. U.S PATENT LAW AND ITS DEVELOPMENT

1.2.1. Pennock v. Dialogue

1.2.2. Grant v. Raymond

1.2.3. Hotchkiss v. Greenwood

1.2.4. Electric Storage Battery v. Shimadzu

1.2.5. Cuno Engineering v. Automatic Devices Corp

1.2.6. State Street Bank v. Signature Financial:

1.2.7. Re Bilski:

2. THE PRIOR ART SEARCH

2.1. DEVELOPING THE INVENTIVE CONCEPT

2.2 WHAT CONSTITUTES PATENTABLE SUBJECT MATTER?

2.3. THE IMPORTANCE OF THE PRIOR ART SEARCH

2.4. PREREQUISITES FOR DETERMINING PATENTABILITY OF AN INVENTION

2.5. RELEVANT PRIOR ARTS

2.6. TYPES OF SEARCHES

2.6.1. Patentability Search

2.6.2. Validity Search

2.6.3. Infringement Search

2.6.4. Non-patent Literature Search

2.6.5. State of the Art Search

2.7. GUIDELINES FOR PERFORMING A PRIOR ART SEARCH

2.8. THE U.S. PTO SEARCH PHASE

2.9. DESIGN PATENT SEARCH

2.10. THE INTERNATIONAL SEARCH PHASE

2.10.1. Delphion

2.10.2. WIPO’s PatentScope®

2.10.3. Other Search Engines

2.11. THE SEARCH REPORT

3. PATENT DRAFTING

3.1. WHAT IS A PATENT?

3.2. CATEGORIES OF PATENTS

3.2.1. Utility Patents

3.2.2. Design Patents

3.2.3. Plant Patents

3.3. TYPES OF PATENT APPLICATIONS

3.3.1. Provisional Patent Application

3.3.2. Non-Provisional Patent Application

3.4. THE SPECIFICATION

3.4.1. Sections of the Specification

3.4.2. U.S. PTO Requirements for the Specification

3.4.3. Guidelines for Drafting the Specification

3.5. THE CLAIMS

3.5.1. U.S. PTO Requirements for Claims

3.5.2. Independent Claims

3.5.3. Dependent Claims

3.5.4. Means-Plus-Function Clauses

3.5.5. Novelty and Non-Obviousness Considerations in Claims

3.5.6. Technical Requirements Of Claims

3.5.7. Guidelines for Claim Drafting

3.6. DRAWINGS

3.6.1. U.S. PTO Requirements for Drawings

3.6.2. Guidelines for Preparing Drawings

3.7. BUSINESS METHOD AND SOFTWARE PATENTS

3.7.1. Business Method Patents

3.7.2. Software Patents

3.8. SAMPLE PATENT APPLICATION

4. DESIGN PATENTS

4.1. U.S.PTO REQUIREMENTS FOR A DESIGN PATENT

4.2. PATENTABILITY OF A DESIGN

4.3. SECTIONS OF A DESIGN PATENT APPLICATION

4.4 DRAWINGS OF A DESIGN PATENT APPLICATION

4.5. GUIDELINES FOR PREPARING A DESIGN PATENT APPLICATION

5: APPLY FOR A PATENT

5.1. FILING DEADLINES

5.2. ADVANTAGES OF ELECTRONIC FILING

5.3. ELECTRONIC FILING OF A PATENT APPLICATION

5.4. PATENT APPLICATION FORMS

5.4.1. Provisional Utility Patent Application Forms

5.4.2. Non Provisional Utility Patent Application Forms

5.4.3. Design Patent Application Forms

5.4. FEES

5.5.1. Utility Patents

5.5.2. Design Patents

5.5.3. Plant Patents

6. PATENT PROSECUTION IN GENERAL

6.1. PRINCIPLES OF LAW REGARDING PATENT PROSECUTION OF CLAIMS REJECTED FOR LACK OF NOVELTY AND OBVIOUSNESS

6.2. OFFICE ACTION

6.3. PREPARING RESPONSE TO AN OFFICE ACTION

6.4. MANNER OF AMENDING THE CLAIMS AND SPECIFICATION

6.4.1. Amendments in applications, other than reissue applications.

6.4.2. Specification.

6.4.3. Claims.

6.4.4 Drawings.

6.4.5. Disclosure consistency.

6.4.6. No new matter.

6.4.7. Exception for examiner’s amendments.

6.4.8. Amendment sections.

6.4.9. Amendments in reissue applications.

6.4.10. Amendments in reexamination proceedings.

6.4.11. Amendments in provisional applications.

6.5. RESPONSE TO A NOTICE TO FILE MISSING PARTS

6.6. RESPONSE TO A RESTRICTION/ELECTION REQUIREMENT (35 U.S.C. 121)

6.7. SAMPLE RESPONSE TO A RESTRICTION/ELECTION REQUIREMENT.

6.8. RESPONDING TO A 112 REJECTION

6.9. RESPONDING TO A 102 (NOVELTY) REJECTION

6.10. RESPONSE TO A 103 (OBVIOUSNESS) REJECTION

6.11. DOUBLE PATENTING REJECTION

7. CONTINUING PATENT PRACTICE

I. EXTENDING PROSECUTION OF AN EXISTING APPLICATION

II. CONTINUING APPLICATIONS

7.1. Continuation Application (37 CFR 1.53 (b), MPEP 201.07)

7.2. Divisional Application (37 CFR 1.53 (b), MPEP § 201.06)

7.3. Continuation-in-part (CIP) application. 37 CFR 1.53(b)

7.4. Reissue Application (MPEP § 201.05 and MPEP 1401)

7.5. Substitute application (MPEP 201.09)

8. PATENT INFRINGEMENT

8.1. WHAT IS PATENT INFRINGEMENT?

8.2. KINDS OF PATENT INFRINGEMENT

8.2.1. Direct and Literal Infringement

8.2.2. Indirect Infringement – Inducement and Contributory

8.2.3. Doctrine of Equivalents

8.2. DETERMINATION OF PATENT INFRINGEMENT

8.2.1. Validity of Claims

8.2.2. Conducting A Patent Infringement Study

8.3. INFRINGEMENT OF DESIGN PATENTS

8.4. INFRINGEMENT OF PLANT PATENTS

8.5. LEGAL REMEDIES FOR PATENT INFRINGEMENT

8.5.1. Injunctive Relief

8.5.2. Damages

8.5.3. Attorney Fees and Court Costs

8.6. DEFENSES TO PATENT INFRINGEMENT

8.6.1. Validity of the Patent

8.7.1. Statutory Safe Harbor Defense

8.8.1. Purely philosophical research

8.9. PATENT INFRINGEMENT BY THE GOVERNMENT

9. PATENT APPEALS

9.1. BASIS OF APPEAL

9.2. WHO MAY FILE AN APPEAL

9.3. HOW IS AN APPEAL FILED

9.4. JURISDICTION OF THE BOARD OF PATENT APPEALS AND INTERFERENCES (THE BOARD)

9.5. SUBJECT MATTER NOT APPEALABLE

9.6. TRANSFER OF JURISDICTION FROM THE EXAMINER TO THE BOARD

9.7. APPEAL BRIEF

9.7.1. Contents of the Appeal Brief

9.8. EXAMINER’S ANSWER

9.9. APPLICANT’S REPLY BRIEF

9.10. ORAL HEARING

9.11. DECISION OF THE BOARD OF APPEALS AND INTERFERENCES

9.12. PRE-APPEAL BRIEF CONFERENCE

9.12.1. General Provisions

9.12.2. Conditions Necessary to Request a Panel Review

9.12.3. Content of Request

9.12.4. Content of Remarks or Arguments

9.12.5. U.S. PTO Consideration of the Request

9.12.6. Format of Panel Decision

9.12. 8. Administrative Matters

9.13. CHECKLIST FOR APPEAL BRIEF FILED UNDER 37 CFR 41.37(FOR THE CURRENT RULES IN EFFECT)

9.14. CHECKLIST FOR NOTICE OF APPEAL FILED UNDER 37 CFR 41.31 LAST ACTION (THE OFFICE ACTION FROM WHICH THE APPEAL IS TAKEN)

9.15. APPELLANT’S OPTION AFTER BOARD’S DECISION

9.16. CONSOLIDATED PATENT RULES

9.17. Chapter 1200 Appeal, MPEP

9.18. FAILURE TO TIMELY FILE AN APPEAL BRIEF

10. PCT APPLICATIONS

10.1. BACKGROUND

10.2. ADVANTAGES OF THE PCT

10.3. THE INTERNATIONAL PHASE

10.3.1. The Filing of the International Application

10.3.3. The Publication of the Application

10.3.4. The International Preliminary Examination

11. INTERNATIONAL PATENT APPLICATIONS - NATIONAL PHASE ENTRY

11.1. DEFINITION

11.2. NATIONAL PHASE APPLICATION

11.3. NATIONAL PHASE ENTRY IN THE UNITED STATES

11.3.2. Fees

12. ASSIGNMENT AND LICENSING OF PATENTS

12. 1 ASSIGNMENT OF PATENTS

12.1.1. What is a patent assignment?

12.1.2. Purpose of a patent assignment

12.1.3. Patent assignment sample

12.2. LICENSING OF PATENTS

12.2.1. What is a patent license?

12.2.2 Benefit of licensing patents

12.2.3. Patent license sample

12.3. REGISTERING PATENT ASSIGNMENTS AND PATENT LICENSES WITH THE U.S.PTO

13. U.S.C TITLE 35

ACKNOWLEDGMENTS

END NOTES

1. INTRODUCTION TO PATENTS

The rights of an inventor to use, manufacture, sell and license an invention is likely to be under constant interference from others copying the invention or idea unless legal protection has been obtained. The best way to legally protect an invention or idea is to patent it. A patent will prevent others replicating the invention or idea for a set period of time. In the United States, this period is for twenty years from the earliest claimed filing date. During this period, the patentee has the exclusive right to use, manufacture, sell and license the invention or idea. Obtaining a patent, however, is a complex process and although this book simplifies the process to a large extent, it is always recommended that a patent attorney or agent be retained to draft and prosecute the patent application. This book will provide the reader with a fair idea on how to conduct a patent search, draft a patent application, prosecute a patent application, file an appeal and to deal with patent infringement. The first chapter provides a basic overview of commonly used terms and expressions in this field and a brief foundation and growth of patent law in the United States.

1.1. Common Terms and Definitions

1.1.1. Invention

An invention refers to a discovery or creation of a new process or material or composition. However, in order to be granted a patent, an invention must also meet the criteria of being useful. According to the U.S. Patent and Trademark Office, (U.S. PTO) any person who "invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent". The U.S. PTO has clarified that the term "useful in this connection refers to the condition that the subject matter has a useful purpose and also includes operativeness, that is, a machine which will not operate to perform the intended purpose would not be called useful, and therefore would not be granted a patent.

1.1.2. First to File

In the United States, the system of first to invent was followed. According to this system, the right to the grant of the patent lies with the inventor of the concept. A person is said to be the first inventor, if the person has discovered or created the concept and reduced the concept to practice. However, the America Invents Act (S. 23), or the Patent Reform Act of 2011 eliminated the first to invent system in favor for the first to file system wherein the first applicant of the patent is considered to have the prima facie right to the grant of the patent. According to the new system, the one year grace period that allows the inventors to prove that they were the first to invent has also been abolished.

1.1.3. Patent

A patent is a set of exclusive property rights granted by the Patent Office in a country to an inventor or his assignee for a particular invention or concept for a set period of time. These rights include the right to make, use, sell and license the invention for the term of the patent. These rights are legally enforceable and give the inventor the opportunity to commercially exploit his invention or idea for the duration of the patent. A patent essentially is an exclusive license granted to the inventor to prevent others from making, using and selling the invention. The U.S. PTO defines a patent as the right given to the inventor to "exclude others from making, using, offering for sale, or selling the invention in the United States or importing" the invention into the United States for a period of twenty years. Under US law, only an inventor can apply for a patent. Two or more persons may also apply for a patent as joint inventors at the U.S Patent Office. According to US patent law, officers and employees of the U.S. PTO are prohibited from applying for a patent or acquiring any right or interest in a patent, other than by gift or inheritance.

1.1.4. Term of the Patent

The term of a patent is usually for twenty years from the filing date of the earliest patent application in most countries. In the United States, this term can be adjusted for delays with the U.S. PTO for patent applications filed on or after June 8, 1995. Continuation, divisional and continuation in part applications filed or after June 8, 1995, has a term which ends twenty years from the filing date of earliest application for which a benefit is claimed.

1.1.5. Patentable Invention

For an invention to be patentable, it is important that the invention be new, non obvious and useful. This means that the subject matter sought to be patented must be sufficiently different from what has been used or described before that it may be said to be non obvious to a person having ordinary skill in the area of technology related to the invention. And even if the subject matter sought to be patented is not exactly shown by the prior art, and involves one or more differences over the most nearly similar thing already known, a patent may still be refused if the differences would be obvious.

The laws of nature, physical phenomena, and abstract ideas are not patentable subject matter. Also, a mere idea or suggestion cannot be patented. According to the U.S. PTO, the patent is granted upon the new machine, manufacture, etc., as has been said, and not upon the idea or suggestion of the new machine. A complete description of the actual machine or other subject matter for which a patent is sought is required.

Further, an invention cannot be patented if: (a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or "(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country more than one year prior to the application for patent in the United States.

Under the Atomic Energy Act (1954) the patenting of inventions useful solely in the utilization of special nuclear material or atomic energy in an atomic weapon is prohibited.

1.1.6. Prior Art

Before a patent application is filed, it is recommended that a prior art search be conducted in order to determine the novelty of the invention. Prior Art, also known as state of the art includes information that is publicly available which might be relevant to the applicant’s claim of originality. The examiner of a patent application will search the prior art as disclosed in patents and other published documents. The novelty and non obviousness of the invention are judged based upon the prior art related to the invention.

1.1.7. Prior Art Reference

A prior art reference may include existing patents, utility models or literature. The patent applicant has a duty to submit as many prior art references that they know of to the U.S. PTO. The examiner will in turn determine if the references submitted meet the criteria as prior art.

1.1.8. Patentee

The party that has been granted the exclusive right to a patent is known as the patentee.

1.1.9. Patent Applicant

The party applying for a patent at its respective patent office is known as the patent applicant.

1.1.10. Assignee

When the rights in a patent or patent application is assigned to another, the person or company receiving these rights is known as the assignee and the person or company assigning these rights is known as the assignor. Often, the person listed as inventor of a patent or patent application assigns his entire interest in the patent to another, usually the company of his employment. Such inventor is known as the assignee and the company or party benefitting from such assignment is known as the assignor.

1.1.11. Patent Infringement

Using of another’s patented invention or part thereof without permission from the owner of the patent during the term of the patent is known as patent infringement. This use must be commercial or have a commercial purpose. Patent infringement refers to the infringement of one or more of the claims in the patent. Patent Infringement can occur only in the country where the patent has been granted and patent rights are territorial in nature. Patent Infringement is explained in detail in Chapter 8.

1.1.12. Statutory Subject Matter

The term statutory subject matter is often used to refer to the subject matter that is patentable by law. According to 35 U.S.C 101, statutory subject matter is "Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title."

1.1.13. Types of Patents

Utility Patent Application

A utility patent application may be filed for any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof. Utility patent applications are of two kinds – provisional and non provisional. A provisional patent application (PPA) may be filed at the U.S. PTO for a lower cost. A provisional patent application provides a means to receive an earlier filing date (priority date) in the non provisional patent application filed later. A provisional patent application is not examined and has a validity period of 12 months. Before the expiry of the 12 month period, the counterpart non provisional patent application (NPA) must be filed with the U.S. PTO in order to claim the benefit of the provisional application. The later-filed non-provisional application claiming the benefit of the provisional application must include at least one claim particularly pointing out and distinctly claiming the subject matter, which the applicant regards as the invention.

Design Patent

A design patent is granted for an ornamental design on a functional item. The U.S. PTO will grant a design patent for a new and non obvious ornamental design. This patent will not protect the functional features of the product. It will only protect the design of the product. The term of a design patent is 14 years from the date of the grant of the patent.

Plant Patent

Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant. The term of a plant patent is 20 years from the date of the earliest filed application.

International (PCT) Patent Application

Under the Patent Co-operation Treaty (PCT), applicants belonging to the member countries are allowed to file an international application prior to the expiry of 12 months from the date of the first filed application. A PCT application will grant the applicant an additional period of 30 months (31 months in some countries) from the earliest filed application to file his patent application in the countries of his choice. This is known as national phase entry.

1.1.14. Patent Pending

The term Patent Pending is used by the patent applicant for an invention before the patent issues. It acts as a warning to the public that a patent will issue shortly and thereby seeks to prevent patent infringement. The term is generally used on the manufactured product or on the advertising for such product. Usage of this term when no patent has been applied for is illegal and such usage will be fined.

1.2. U.S Patent Law and its Development

Before the first federal enactment on patents in 1790, most states had their own patent laws. In order to make patent law a federal matter, the provision, Congress shall have power … to promote the progress of science and useful arts by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries was drafted into the U.S. Constitution. The first Patent Act titled, An Act to Promote the Progress of Useful Arts was enacted in 1790. Under this Act, patents were granted for a term of 14 years. The main requirement for an application under this Act was a specification that described the invention. The first U.S patent number X000001 was granted in 1790.

In the time of Thomas Jefferson, this Act was repealed and replaced by the Patent Act of 1973. Unlike the previous Act, a description was required to be filed along with a specification of the invention. Only citizens of the United States could have granted patents according to this Act. In 1800, the Act was further amended to include foreigners, resident in the United States for two years to apply for patents. They were required however, to take an oath that to the best of their knowledge the invention was not used in the United States or abroad.

1.2.1. Pennock v. Dialogue

In 1829, it was in the case of Pennock v. Dialogue that for the first time the Court held that patents could not be granted to inventions that were already in use. The Court stated, the first inventor cannot acquire a good title to a patent; if he suffers the thing invented to go into public use, or to be publicly sold for use, before he makes application for a patent.

1.2.2. Grant v. Raymond

In the case of Grant v. Raymond in 1832, the Court ruled that an insufficient description of a patent was grounds for defense in a case of patent infringement. The Court stated, If the party is content with defending himself…..shows that the patentee has failed in any of those prerequisites on which the authority to issue the patent is made to depend, his defense is complete

In 1832, a new Act was created which permitted all resident aliens who wished to become US citizens to file patent applications in the United States provided that they work the invention publicly in the United States within one year of the grant. In 1842, the existing patent law was amended to include any new and original design for a manufacture or for printing on a fabric. The Patent Office was transferred from the Department of State to the Department of the Interior in 1849.

1.2.3. Hotchkiss v. Greenwood

The Supreme Court case of Hotchkiss v. Greenwood, was the first to lay down the principle that a patentable invention was required to be non obvious, in addition to being new and useful. However, it was not until 1952 that the standard of non obviousness was set in an enactment.

From 1836 to 1864, the applicant was given the right to amend the specification if there were any objections, however, no new matter could be added during the prosecution stage. In 1861, the term of the patent was changed from 14 years to 17 years from the date of the grant of the patent. The United States joined the Paris Convention for the Protection of Industrial Property in 1887. The Convention allowed one applicant from a contracting state to file an application in another contracting state and claim the filing date as the date of the first application provided the applicant files the second application within 12 months from the date of the first filing.

In 1925, the Patent Office was transferred to the Department of Commerce and Labor. The Plant Patent Act provided for patent protection for asexually reproduced plants in 1930.

1.2.4. Electric Storage Battery v. Shimadzu

The Shimadzu case in 1939 established the principle of first to invent followed in present U.S. patent law.

1.2.5. Cuno Engineering v. Automatic Devices Corp

In 1941, the case of Cuno Engineering v. Automatic Devices Corp established the Flash of Genius Doctrine a test of patentability of the invention. According to this test, the invention must be created by a flash of genius on the part of the inventor. The new device, however useful it may be, must reveal the flash of creative genius, not merely the skill of the calling. However, his test was rejected in 1952 by the §103 enactment that established the standard of non obviousness.

The basic structure of U.S. patent law was laid out in 1952 where an inventor had to describe not only his invention but the basis for its infringement. The Patent Co-operation Treaty (PCT) was signed 1968. It was in 1975 that the Patent Office was renamed the The Patent and Trademark Office. In 1982, the Court of Appeals for the Federal Circuit was established and the Court of Customs and Patent Appeals were abolished. In 1995, the Uruguay Round Table Agreement Act was adopted where the patent term was changed from 17 years from date of the grant to 20 years from date of the application.

1.2.6. State Street Bank v. Signature Financial:

In 1998, in the case of State Street Bank v. Signature Financial, it was held that business methods could be patented. In this case, the Court held that an invention was patentable if it involved some practical application. The Signature Financial Group, Inc. was granted U.S. Patent #5,193,056. The patent claim comprised of a means for performing steps that are the requirements specified in an Internal Revenue Service regulation for avoiding taxes on a partnership.

1.2.7. Re Bilski:

Ten years later in 2008, the Bilski ruling restricted the scope of business methods. In Re Bilski, the court laid down its test for patent eligible subject matter, and stated that the test in State Street Bank v. Signature Financial should no longer be relied upon. The Court ruled, "those portions of our opinions in State Street, relying on a useful, concrete and tangible result analysis should not longer be relied on. The deciding test to be applied if an invention is patent eligible according to the Bilski case is if (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing. The Court went as far as to state that, Purported transformations or manipulations simply of public or private legal obligations or relationships, business risks, or other such abstractions cannot meet the test because they are not physical objects or substances, and they are not representative of physical objects or substances.

Currently, the United States Patent and Trademark Office (U.S. PTO) is the authority with regard to patents in the United States. The U.S. PTO publishes patents 18 months from the date of filing of the application. The Manual of Patent Examining Procedure (MPEP) provides the definitions and establishes the procedure with regard to the patentability of inventions. The current term of the patent is 20 years from the earliest claimed date of filing and this term may also be extended.

2. THE PRIOR ART SEARCH

2.1. Developing the Inventive Concept

Prior to conducting a prior art search, you need to carefully and practically identify and develop your invention. The following points will help in developing your inventive concept:

•   Determine the unmet need or problems in the current technology and the problem that your invention solves. An invention is any tangible creation that provides a solution to a problem. You can go about your everyday life detecting problems that need to be solved and thereafter come up with solutions to the detected problems. The solution to the problem may lie in an idea, a physical element, a structure, a feature, a method step or an improvement of an existing idea, physical element, structure, feature or method step.

•   Determine whether your invention falls within the statutory classes defined by a patent office for an invention. For example, the United States Patent And Trademark Office (U.S. PTO) defines the following statutory classes for an invention: a new process, machine, article of manufacture, composition of matter, and a new and useful improvement thereof. Your invention may also be a new design for an article of manufacture or a new asexually reproduced plant variety.

•   Determine the utility of your invention. To establish the utility of your invention, you need to define the basic structure of your invention, its useful function, and finally the new and useful result that your invention generates.

•   Determine the novelty of your invention. Your invention should not be publicly known to others anywhere in the world. The newness or novelty of an invention lies in the fact that the invention has a new structure, produces a new result, has a new method of producing a known result, or has a new use for an existing product.

•   Determine whether your invention is obvious. Your invention should be non-obvious to a person having ordinary skill in the art related to the invention. The U.S. Supreme Court in Graham v. John Deere has laid down the indicia for non-obviousness which will be reviewed in detail under the chapter on patent prosecution.

2.2 What Constitutes Patentable Subject Matter?

As explained in Chapter 1, you can protect the utility of an invention, an ornamental design of an invention, and asexually reproduced plant varieties. Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title. Therefore, it is relatively easy to classify your invention into at least one of the above mentioned areas.

On the other hand, inventions such as perpetual motion machines, and inventions related to laws of nature, physical phenomena, mental processes, abstract ideas, literary and artistic works, etc. do not constitute patentable subject matter. Although scientific truths are not patentable, you may be able to patent a novel structure developed using knowledge of the scientific truth.

Moreover, although computer programs and algorithms are not patentable, the use of the computer program or algorithm to control hardware to produce a useful, concrete, and tangible result can be patented. With regard to business methods, the recent Bilski decision held that a business method is surely patent eligible if 1) the method is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing.

After you have developed your invention and you have concluded that the invention constitutes patentable subject matter, you can proceed to conduct a prior art search to determine whether your inventive concept is new and non-obvious.

2.3. The Importance of the Prior Art Search

A prior art search for the inventive concept is important for at least three reasons. First, it determines whether the inventive concept is new and patentable. Second, it allows you to draft the claims as broadly as possible but just narrower than the prior art. Third, it reduces prosecution history estoppel when the patent application is prosecuted by not requiring the claim to be amended.

You cannot assume that your invention is new and non-obvious. This kind of an assumption may result in unnecessary expenditure of time and money in having to redraft the claims of the patent application. The prior art search will help you decide whether your inventive concept is patentable and whether you can obtain a patent. You can determine the patentability of your inventive concept based on its utility or design. If the utility or design is new and non-obvious, you can conclude that your inventive concept is patentable. The prior art search will also give you useful information on existing developments in the field of your invention. Knowledge of existing developments will help you further improve your inventive concept by determining additional embodiments to your invention that can be used to expand or refine your invention. Developing improvements to your invention can later be used to broaden the scope of your patent application. The prior art search will also help you determine the commercial practicability and assess the commercial potential of your invention.

If the search proves that your invention is not patentable, you can avoid investing a substantial amount of time and money in producing and marketing your invention.

2.4. Prerequisites for Determining Patentability of an Invention

The prerequisites for determining patentability of an invention are novelty and non-obviousness. For an invention to be considered novel, you need at least one element (or method step) or a combination of elements (or method steps) in your invention that is not explicitly discussed or identically disclosed in a single prior art reference.

With reference to non-obviousness, a patent may not be obtained if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Shortly after the Supreme Court’s decision in