How do you know whether you have an invention for which a patent can be obtained? That is a complicated question, as most legal questions are unfortunately. Compounding the complexity, however, are a whole host of business considerations that do not relate to the legal question of whether you are at all likely to obtain a patent. This article will explore the five substantive requirements that must be satisfied before any invention can be patented. These requirements together are commonly referred to as the patentability requirements.

The question of patent eligibility leads the many anti-patent zealots and other patent newbies to erroneously conclude that if an invention is patent eligible then a patent issues.  Nothing could be further from the truth. So what is required for an invention to be patented?  The patentability requirements mandate that the subject matter : (1) patent eligible; (2) useful, (3) new; (4) non-obvious; and (5) described with the particularity required so that people of skill in the relevant technology field or science can understand what the invention is, make the invention and use the invention without engaging in what the law calls undue experimentation. 

Patentable Subject Matter – 35 U.S.C. § 101

35 U.S.C. §101 says that if you are claiming a machine, process, article of manufacture, or a composition of matter (i.e., compound) then your invention is patent eligible. This question is a threshold one and historically in the United States virtually everything had been viewed as being patent eligible subject matter. The Legislative History of the 1952 Patent Act informs us that Congress intended the patentable subject matter referred to in 35 U.S.C. §101 to “include anything under the sun that is made by man.”

Why would this be the case? 

If an entire category of innovation is deemed patent ineligible then no patent could issue even if the innovation is useful, new, non-obvious and described so as to inform the public. Determining something is patent ineligible subject matter cuts innovation off at the knees. The good news, however, is that the extraordinary and rather inexplicable departure by the Supreme Court from traditional U.S. notions has largely been confined (if not exclusively confined) to software and certain biotechnology innovations. Saying that this is good news admittedly sounds rather ridiculous given that over 50% of all innovation today relates in one way or another to software advances, and the software and biotechnology industries are industries the U.S. has dominated for over a generation because of our pro-innovation, pro-patent stance.

The Utility Requirement – 35 U.S.C. § 101

The second aspect of §101 relates to utility, another so-called threshold requirement for patentability. To satisfy the requirements of §101 it is not only necessary to demonstrate that the subject matter of the invention is patentable, but the patentee is also required to demonstrate that the claimed invention is “useful” for some purpose. This statement of utility, while necessary, can be made either explicitly or implicitly. The utility requirement finds its foundation in the belief that an invention that is inoperative is not a “useful” invention within the meaning of §101 and, therefore, does not deserve patent protection. For a claimed invention to violate the utility requirement it must be “totally incapable of achieving a useful result.” Therefore, an invention that is at least partially useful will passes muster under §101 and the USPTO will not issue a utility rejection.

It is important to remember, however, that the PTO has the initial burden of challenging the applicant’s assertion of utility. This is true because the applicant’s assertion of utility in the disclosure will be initially presumed to be correct. Only if the USPTO provides evidence showing that one of ordinary skill in the art would reasonably doubt the asserted utility does the burden shift to the applicant to provide rebuttal evidence sufficient to convince the USPTO of the invention’s asserted utility.