Anyone who invents or discovers any new and useful process, machine, or item, or any new and useful improvement of one, may obtain a patent. Patents are the ideal method of protection when something is practical or able to be discovered through independent invention because it will still provide protection whereas copyrights and trade secrets would not. The two type of patents are process patents (processes and improvements) and product patents (machine, manufactures, compositions of matter, and improvements) Laws of nature, abstract ideas, and physical phenomena are never patentable. To receive patent protection there are five threshold requirements.

  • Is the invention patentable subject matter?
  • Is the invention useful?
  • Has the inventor properly disclosed the invention?
  • Is the invention new?
  • Is the invention non-obvious?

Is the invention patentable subject matter?


As stated above, laws of nature, abstract ideas, and physical phenomena are not patentable. For example, a living organism that could be found in nature is not patentable. However, if it has been man made or altered where you could not look to nature and find it, then it is patentable. Business methods can be patentable but if they are abstract ideas such as algorithms or mathematical formulas alone they are not patentable. Applying an idea through generic technology is also not patentable.

Is the invention useful?


To be useful, there must be a specific benefit in its currently available form. Regarding the research and testing process for some products, this is usually satisfied around the testing phase. The laws want to make sure they do not give patent rights too so that research continue and the true value is found. This is balanced with the fact that people cannot afford to continue developing and researching if they do not know their work is protected.

Has the inventor properly disclosed the invention?

Disclosure has to do with the actual “specification” given to the patent office. The specification must contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise and exact terms as to enable any person skilled in the art to make and use the same. There are two main requirements for disclosure: 1) enablement requirement and 2) written description. The enablement requirement, as mentioned above, requires a person skilled in the art to make and use the invention without undue experimentation.

The written description requirement required the specification to conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. There must be a correlation between what the claims states and what the description states at the time of filing. The written description part of the disclosure ensures that the inventor cannot amend a claim to include material not described in the original specification. It also ensures the inventor was in possession of the claimed invention when the application was filed.

Is the invention new (novelty and timely filing)?


Novelty is concerned with the invention truly being new and making sure it has not already been shared with the public. Timely filing is concerned with even if the invention is new, has the inventor waited too long to file for a patent? There is a new system that is based on the first to file as opposed to the first to invent for receiving patent protection.

Is the invention non-obvious?

This one is rather strange. When seeking a patent, the patent examiner considers whether the invention would have been obvious to others. If it was, no patent for you. Just how do they determine this? By inventing a hypothetical person with average skills and extraordinary knowledge of existing devices or process and trying to determine whether such a person would have thought of the invention you thought of.

Can I patent a business method?

Unless you invent a time machine and go back a few years, no, probably not. Business method patents were all the rage a few years ago. Every start-up company under the sun had a new process or method for doing business that they were getting patented. Well, those days are over. The Supreme Court changed the rules, and now you really need something more concrete than a method of doing business. So, how you go about your business isn’t really something you can patent anymore (absent extremely unusual circumstances), and patents are once again mostly for “things,” but that is why trade secrets were invented.

© 2016 John V. Robinson, P.C.