Patent Basics – Patentability

This article is an introduction to some of the characteristics that determine whether a patent application may result in a successful patent, that is to say whether the application has “patentability”. Patentability requires that the claimed invention (1) is patent eligible, (2) is useful, (3) has not been anticipated by prior art, (4) is not obvious in view of prior art, and (5) that the invention is described in a way that an ordinary person skilled in the art could make and use the invention (also can be stated as the application meets the enablement requirement).

Subject Matter Eligibility

            An invention is only eligible for a patent if it falls under one of four statutory categories, these are processes, machines, manufactures, and compositions of matter. Even if an invention falls under one these categories there are also some specific judge created exceptions which make it so that inventions that generally involve abstract ideas, laws of nature, or natural phenomenon are not eligible. In order for inventions under these exceptions to be patentable they must have an aspect that is “significantly more” beyond those ideas, and not be entirely contained within the exception. Subject matter eligibility analysis is done on a case-by-case basis, and the specific way the analysis is approached can vary significantly, so this can be an area to look out for when determining patentability.


            Another requirement for patentability is Utility, which states that an invention must show both specific and substantial utility. Specific utility is shown by some kind of well-defined and particular benefit to the public at large. The application itself must disclose some specific use/application of the invention. Substantial utility states that the current form of the invention has to be useful, it is not enough to say the invention may be useful at some point in the future.


            An important concept to keep in mind for both anticipation and obviousness is the idea of “prior art”. A new patent is compared against the existing subject matter of the invention in order to determine if it is new and original. This existing subject matter includes patents and patent applications, things in public use, on sale, or otherwise available to the public at the time the patent application is filed. All of these things together make up the prior art, though the exact extent of prior art can change slightly depending on the exact grounds being challenged.

If a patent application is too similar to existing prior art then it has been anticipated by that prior art and is therefore not patentable. Specifically, if every limitation and element of a patent claim can be found, either expressly or inherently, within the prior art, and these limitations are also arranged in the same way as the claim, then the invention is not new and has been anticipated.

There are two important aspects to keep in mind, first ever aspect of the invention does not need to be spelled out word for word in the prior art, as long as each aspect would be “inevitably present” in the prior art then it has been inherently disclosed. Second, the prior art used must sufficiently describe the invention, an invention is sufficiently described when a person of ordinary skill in the area of the invention could make the invention based on the prior art.


            In addition to not being anticipated by prior art, a claimed invention must also be non-obvious in relation to the prior art. Obviousness examination allows for picking and choosing elements of a claim from multiple different pieces of prior art, and determining whether the combination of these would be obvious to a person having ordinary skill in the art. Because multiple pieces can be combined to invalidate a claimed invention as obvious, this is generally the most common reason for a patent to be rejected.

The basic structure of an obviousness analysis is to consider (1) the scope and content of the prior art, (2) the difference between the prior art and the claims of the invention at issue, (3) the level of ordinary skill in the relevant art, and (4) any secondary considerations that may be relevant. The application of these factors can differ in any particular case, and the courts are flexible in finding different reasons for why these underlying factors may lead to a finding that a new invention is obvious. Among these reasons are combining prior art according to known methods to yield a predictable result, substituting one element for another to gain a predictable result, or that the invention was “obvious to try”. This is just a short list of some reason’s courts may use, and they can furthermore come up with additional reasoning if the circumstances allow. For this reason, obviousness analysis is particularly difficult to navigate without proper assistance from a trained patent attorney.


            The final requirement is that the application adequately describes, or enables, the claimed invention. This requirement requires that the application describes the invention with enough specificity that a person having ordinary skill in the art could make and use the invention. The main test here is that a person cannot have to use undue experimentation in making and using the invention. This is another test that is case by case, but generally the factors taken into account are (1) the amount of experimentation needed, (2) the level of predictability, and (3) whether there is a work example in the applications specification.


This is a very quick introduction to these requirements, each is a hurdle that must be overcome in order to successfully obtain a patent, and each can be complicated and difficult to navigate in its own way. Having experienced patent attorneys review your idea and assist in obtaining a patent is the best way to make sure each requirement is met, and ultimately to successfully obtain a patent.

For a more in-depth look at these and other patent issues, refer to “U.S. Patent Law For People In A Rush.”

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