Patentability

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Within the context of a national or multilateral body of law, an invention is patentable if it meets the relevant legal conditions to be granted a patent. By extension, patentability also refers to the substantive conditions that must be met for a patent to be held valid.

Contents

Requirements

The patent laws usually require that, for an invention to be patentable, it must be:

Usually the term "patentability" only refers to "substantive" conditions, and does not refer to formal conditions such as the "sufficiency of disclosure", the "unity of invention" or the "best mode requirement".

Judging patentability is one aspect of the official examination of a patent application performed by a patent examiner and may be tested in post-grant patent litigation.

Prior to filing a patent application, inventors sometimes obtain a patentability opinion from a patent agent or patent attorney regarding whether an invention satisfies the substantive conditions of patentability.

Opposition and reexamination

Many national and regional patent offices provide procedures for reconsidering whether or not a given patent is valid after grant. Under the European Patent Convention, any person can file an opposition provided they act promptly after the patent is granted. In the United States, members of the public can initiate reexamination proceedings. Japan provides similar options. In India, the Patent Act provides for a dual opposition system i.e. pre-grant opposition as well as post grant opposition. While a pre-grant opposition may be filed by any person, the post grant opposition may only be filed by a person interested in the field of invention. [2]

Members of the public can also initiate lawsuits in the courts of various nations to have patents declared invalid.

United Kingdom patents can be reviewed by way of a non-binding opinion issued by the Patent Office, or by formal applications for revocation before the Patent Office or the Court. If the patent survives a revocation action, this fact is noted for future reference by way of a Certificate of contested validity.

Infringement

The fact that an invention is patentable or even patented does not necessarily mean that use of the invention would not also infringe another patent. The first patent in a given area might include a broad claim covering a general inventive concept if there is at that point no relevant prior art. Later, a specific implementation of that concept might be patentable if it is not disclosed in the earlier patent (or any intervening prior art), but nevertheless still falls within the scope of the earlier claim (covering the general concept). This means that the later inventor must obtain a license from the earlier inventor to be able to exploit their invention. At the same time, the earlier inventor might want to obtain a license from the later inventor, particularly if the later invention represents a significant improvement in the implementation of the original broad concept. In this case, the two enter into a cross license.

Thomas Edison's thin carbon filament light bulb was a patentable improvement over the earlier patented Woodward and Evans thick carbon filament light bulb. Thomas Edison bought the Woodward patent for $5,000 US before he began his development work so that Woodward would not be able to later sue him for patent infringement after Edison became commercially successful.

National laws

United States

Under United States patent law, inventorship is also regarded as a patentability criterion. It is a constitutional requirement. Congress's ability to grant patents is authorized only for the inventor. This was confirmed by case law: "Inventorship is indeed relevant to patentability under 35 U.S.C. § 102(f), and patents have in the past been held unenforceable for failure to correctly name inventors in cases where the named inventors acted in bad faith or with deceptive intent." [3]

Details on patentability in the U.S. can be found in the Manual of Patent Examining Procedure or MPEP. This is published by the United States Patent and Trademark Office (USPTO) and is the reference manual used by both patent examiners and patent agents/attorneys. Chapter 2100, in particular, gives a comprehensive overview of the standards for patentability, a discussion of the related case law, and guidance on how to overcome an examiner's rejection of a given set of claims.

In the United States, the patent grant is presumptive, e.g. a patent shall issue unless the patent statutes preclude the grant. In other words, the burden is on the Patent Office to prove why a patent should not be granted. [4] Once a patent issues, however, it is presumed valid and a court may declare it invalid only on the basis of clear and convincing evidence.

Europe

Terminology in Europe, within the member states of the European Patent Organisation, [5] is slightly different from U.S. terminology. While in the U.S. all patent applications are considered to cover inventions automatically, in Europe a patent application is first submitted to a test whether it covers an invention at all: the first out of four tests of Article 52(1) EPC (the other three being novelty, inventive step, and industrial applicability). So an "invention" in European legal terminology is similar to "patentable subject-matter" in the American system. Articles 52-57 of the European Patent Convention are concerned with patentability. [6]

India

Under the Indian Patent Act (1970), "inventions" are defined as a new product or process involving an inventive step and capable of industrial application. [7] Thus the patentability criteria largely involves novelty, inventive step and industrial application or usability of the invention. In addition, section 3 of the Patent Act, 1970, also provides a list of non-patentable inventions for e.g. inventions that are frivolous or contrary to well established to natural laws. [8]

Quotes

[The question whether there is a patentable invention] is as fugitive, impalpable, wayward, and vague a phantom as exists in the whole paraphernalia of legal concepts. It involves, or it should involve, as complete a reconstruction of the art that preceded it as is possible. The test of invention is the originality of the discovery, and discovery depends upon the mental act of conceiving the new combination, for substantially every invention is only a combination. Nothing is more illusory, as nothing is more common, than to assume that this can be measured objectively by the magnitude of the physical readjustments required. Courts never tire, or at least in earlier times they never did, of expatiating upon the freshness of insight which observes a little, but fruitful, change which had theretofore escaped detection by those engaged in the field. When all is said, we are called upon imaginatively to project this act of discovery against a hypostatized average practitioner, acquainted with all that has been published and all that has been publicly sold. If there be an issue more troublesome, or more apt for litigation than this, we are not aware of it. (...)
- US Judge Learned Hand in Harries v. Air King Prod. Co., 183 F.2d 158, 162 (2d Cir. 1950). [9]

See also

Related Research Articles

Prior art is a concept in patent law used to determine the patentability of an invention, in particular whether an invention meets the novelty and the inventive step or non-obviousness criteria for patentability. In most systems of patent law, prior art is generally defined as anything that is made available, or disclosed, to the public that might be relevant to a patent's claim before the effective filing date of a patent application for an invention. However, notable differences exist in how prior art is specifically defined under different national, regional, and international patent systems.

A person having ordinary skill in the art, a person of (ordinary) skill in the art, a person skilled in the art, a skilled addressee or simply a skilled person is a legal fiction found in many patent laws throughout the world. This hypothetical person is considered to have the normal skills and knowledge in a particular technical field, without being a genius. This measure mainly serves as a reference for determining, or at least evaluating, whether an invention is non-obvious or not, or involves an inventive step or not. If it would have been obvious for this fictional person to come up with the invention while starting from the prior art, then the particular invention is considered not patentable.

In United States patent law, utility is a patentability requirement. As provided by 35 U.S.C. § 101, an invention is "useful" if it provides some identifiable benefit and is capable of use and "useless" otherwise. The majority of inventions are usually not challenged as lacking utility, but the doctrine prevents the patenting of fantastic or hypothetical devices such as perpetual motion machines.

Novelty is one of the patentability requirement for a patent claim, whose purpose is to prevent issuing patents on known things, i.e. to prevent public knowledge from being taken away from the public domain.

The inventive step and non-obviousness reflect a general patentability requirement present in most patent laws, according to which an invention should be sufficiently inventive—i.e., non-obvious—in order to be patented. In other words, "[the] nonobviousness principle asks whether the invention is an adequate distance beyond or above the state of the art".

Business method patents are a class of patents which disclose and claim new methods of doing business. This includes new types of e-commerce, insurance, banking and tax compliance etc. Business method patents are a relatively new species of patent and there have been several reviews investigating the appropriateness of patenting business methods. Nonetheless, they have become important assets for both independent inventors and major corporations.

Patent prosecution describes the interaction between applicants and their representatives, and a patent office with regard to a patent, or an application for a patent. Broadly, patent prosecution can be split into pre-grant prosecution, which involves arguing before, and sometimes negotiation with, a patent office for the grant of a patent, and post-grant prosecution, which involves issues such as post-grant amendment and opposition.

Sufficiency of disclosure or enablement is a patent law requirement that a patent application disclose a claimed invention in sufficient detail so that the person skilled in the art could carry out that claimed invention. The requirement is fundamental to patent law: a monopoly is granted for a given period of time in exchange for a disclosure to the public how to make or practice the invention.

The United States is considered to have the most favorable legal regime for inventors and patent owners in the world. Under United States law, a patent is a right granted to the inventor of a (1) process, machine, article of manufacture, or composition of matter, (2) that is new, useful, and non-obvious. A patent is the right to exclude others, for a limited time from profiting of a patented technology without the consent of the patent-holder. Specifically, it is the right to exclude others from: making, using, selling, offering for sale, importing, inducing others to infringe, applying for an FDA approval, and/or offering a product specially adapted for practice of the patent.

In patent law, an inventor is the person, or persons in United States patent law, who contribute to the claims of a patentable invention. In some patent law frameworks, however, such as in the European Patent Convention (EPC) and its case law, no explicit, accurate definition of who exactly is an inventor is provided. The definition may slightly vary from one European country to another. Inventorship is generally not considered to be a patentability criterion under European patent law.

Parker v. Flook, 437 U.S. 584 (1978), was a 1978 United States Supreme Court decision that ruled that an invention that departs from the prior art only in its use of a mathematical algorithm is patent eligible only if there is some other "inventive concept in its application." The algorithm itself must be considered as if it were part of the prior art, and the claim must be considered as a whole. The exact quotation from the majority opinion is: "Respondent’s process is unpatentable under §101, not because it contains a mathematical algorithm as one component, but because once that algorithm is assumed to be within the prior art, the application, considered as a whole, contains no patentable invention." "The fact that the algorithm may not have actually been known previously and that, when taken in combination with other claim elements, it might produce an invention that is novel and nonobvious, plays no part in the analysis."

Japanese patent law is based on the first-to-file principle and is mainly given force by the Patent Act of Japan. Article 2 defines an invention as "the highly advanced creation of technical ideas utilizing the law of nature".

This is a list of legal terms relating to patents and patent law. A patent is not a right to practice or use the invention claimed therein, but a territorial right to exclude others from commercially exploiting the invention, granted to an inventor or his successor in rights in exchange to a public disclosure of the invention.

Double patenting is the granting of two patents for a single invention, to the same proprietor and in the same country or countries. According to the European Patent Office, it is an accepted principle in most patent systems that two patents cannot be granted to the same applicant for one invention. However, the threshold for double patenting varies from jurisdiction to jurisdiction.

<span class="mw-page-title-main">Canadian patent law</span>

Canadian patent law is the legal system regulating the granting of patents for inventions within Canada, and the enforcement of these rights in Canada.

The history of United States patent law started even before the U.S. Constitution was adopted, with some state-specific patent laws. The history spans over more than three centuries.

The exhausted combination doctrine, also referred to as the doctrine of theLincoln Engineeringcase, was the doctrine of U.S. patent law that when an inventor invents a new, unobvious device and seeks to patent not merely the new device but also the combination of the new device with a known, conventional device with which the new device cooperates in the conventional and predictable way in which devices of those types have previously cooperated, the combination is unpatentable as an "exhausted combination" or "old combination". The doctrine is also termed the doctrine of the Lincoln Engineering case because the United States Supreme Court explained the doctrine in its decision in Lincoln Engineering Co. v. Stewart-Warner Corp. This doctrine has been considered abrogated by the US Congress in 1952, when it passed the 1952 Patent Act.

<span class="mw-page-title-main">Sufficiency of disclosure in Canadian patent law</span>

In Canada, every patent application must include the “specification”. The patent specification has three parts: the disclosure, the claims, and the abstract. The contents of the specification are crucial in patent litigation.

<span class="mw-page-title-main">Outline of patents</span> Overview of and topical guide to patents

The following outline is provided as an overview of and topical guide to patents:

<i>Czarnik v. Illumina Inc.</i>

Czarnik v. Illumina Inc., 437 F. Supp. 2d 252, was a United States patent law case heard before the United States District Court for the District of Delaware. In its ruling, the district court was the first court to hold that reputational harm could be sufficient to establish standing in an action for correction of named inventor under 35 U.S.C. § 256. That ruling led to a split among district courts that has yet to be definitively resolved.

References

  1. ↑ Article 57 EPC
  2. ↑ "Opposition Proceedings to Grant of Patents".
  3. ↑ Board of Education ex rel Board of Trustees of Florida State University v. American Bioscience Inc, 67 USPQ 2d 1252 (Fed Cir 2003)
  4. ↑ A person shall be entitled to a patent unless... 35 USC 102
  5. ↑ European Patent Office, Member states of the European Patent Organisation, accessed 16 November 2022
  6. ↑ European Patent Office, European Patent Convention, 17th edition, 2020], pg. 108-117
  7. ↑ "Indian Patent Act 1970-Sections". ipindia.nic.in. Retrieved 2019-04-04.
  8. ↑ "What are not inventions - Section 3".
  9. ↑ US Court of Appeals for the Second Circuit, Harries et al. v. Air King Products Co., Inc, 183 F.2d 158 (2d Cir. 1950), accessed 16 November 2022
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