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Written by : Dane Rottner
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registered patent attorneys received many questions throughout the course of a day one of the most common questions is is my invention patentable we will look at the various issues that go into answering this question including what is a patent what is patentable and what rights does a patent confer additionally we will look at three types of patents and what each is used for there are three types of patents these three are utility design and plant utility patents are what people think of when they think patents utility patents are patents on useful items these are the patents one would get on an invention such a patent covers the usefulness of a product meaning that a utility patent will protect the useful or functional aspects of an invention design patents are to the ornamental design of an object a simple way to approach design patents is to consider the fins on the car if you remember old 1950s era cars many of them had big fins on them they served no purpose other than to look cool the fins did not make the cars faster improve aerodynamics and did not serve any function they were pure design design patents are to protect these design elements functional parts of the car eg the engine transmission breaks etc would be covered by utility patents instead finally we have plant patents plant patents are to cover new types of flowering plants that can be reproduced asexually flowers are plant sex organs and contain both the male and female parts pollen is basically plant sperm something to keep in mind during allergy season plant patents thus apply to plants that are engineered to reproduce without the use of pollen when a product or process is new and useful it is very likely that it is patentable to be patentable an invention must satisfy three basic elements the invention must be new useful and not obvious the requirement of being new also called the novelty requirement is the easiest for non practitioners to understand but is often the hardest part of the patent prosecution process to get a patent on an invention the invention must be new in practicing patent law much of the process focuses on explaining how and why the invention is different from what came before everything that came before is referred to as the prior art the invention cannot be expressly or implicitly disclosed in any prior art references if there is already a patent for the invention a patent application for the invention a description of the invention in a printed publication or a product and use that already uses the process used by the invention the invention does not meet the novelty requirement usefulness also referred to as the utility requirement is in practice one of the easier parts of the process after all as the saying goes necessity is the mother of invention inventions are almost always solutions to problems the mere fact that it's a solution to an existing problem makes it useful the utility requirement requires us to answer the questions does the invention do anything and does the invention work with yeses non-obviousness is a different problem from novelty to some extent all inventions are combinations of older inventions this is the idea that as Isaac Newton said if I have seen further it is by standing on the shoulders of giants the non-obviousness test is asking is the combination that comprises the invention in question obvious an obvious Nissen query asks whether combining two older inventions would be obvious to one skilled in the art one skilled in the art is like the reasonable person who appears frequently in other areas of law but in this case the reasonable person is one who works in or is skilled in the field of the invention an interesting method to describing non-obvious nests as the rhesus problem after Reese's Pieces by this we mean would it have been obvious to combine chocolate in peanut butter many enjoy this combination of flavors but would it have been obvious to combine them in hindsight it is hard to imagine our lives without many of the inventions take for granted but someone had to think of each of them first to get a patent the invention must be a non-obvious combination peanut butter and chocolate are a delicious but not an obvious combination of flavors in Graham versus John Deere company a 1966 United States Supreme Court case the court approached non-obviousness the court employed a three-part factual analysis for determining non-obvious nests the first inquiry is to determine the scope and content of the prior art second the court must examine the differences between the prior art and the claims at issue the third step is to analyze the level of ordinary skill in the pertinent art once these factors are analyzed a court will determine whether an invention is non-obvious a patent is not the right to make and use your invention it is the inverse it is the right to prevent others from making using or importing the invention claimed in the patent if a process is covered by a patent then any product that uses that patented process is infringing on that patent the allegedly infringing product is compared with the claims in the original patent to see if the product used the patented process thus infringing on the patent as a corollary to this a patent cannot allow the use of a process that was previously patented by someone else however an improvement on an existing product can be patented while the patent on the original product stays with the original patent holder the new patent can cover the improvement while the party who patents the improvement does not get rights to the original patent the holder of the original patent likewise has no rights to the patented improvement a common example that is applicable to teachers and students is of the dry erase marker and its evolution the marker exists and someone holds a patent on it then someone invented the stackable cap which is the cap on the dry erase marker that allows the markers to connect to one another that cap was an invention and could itself have been patented however holding the patent on the cap does not allow one to build the new dry erase markers someone else holds that patent the patent on the cap hold prevents the original dry erase marker manufacturer from adding the improved cap to the marker so is an invention patentable if it is new useful and not obvious then the answer is yes a patent application may then be drafted and filed with the USPTO a process that is covered in other presentations if one is granted a patent one then has the right to keep others from making using or importing one's invention without one's permission
Thanks for your comment Sharita Engler, have a nice day.
- Dane Rottner, Staff Member
Thanks for this interesting article
Thanks Junie your participation is very much appreciated
- Dane Rottner
About the author
I've studied philosophy of engineering at University of Georgia in Athens and I am an expert in speleology. I usually feel guilty. My previous job was industrial engineer I held this position for 28 years, I love talking about word searches and drawing. Huge fan of Mark Zuckerberg I practice table tennis and collect fabric and textiles.
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