Getting Your Patent Allowed – What Are the Hurdles?
Episode #5 of the course Patent basics: for inventors and decision-makers by Clint R. Morin
In the last lesson, we discussed the parts of a patent application, which includes the claims, drawings, and specification. In this lesson, we will discuss the requirements that your patent application needs to meet in order to be issued as a patent.
Legal Requirements
Now that you have an overview of the process, let’s discuss what legal requirements a patent must meet before you can get your application issued as a patent. A patent examiner will check whether each of these hurdles or requirements, in his or her opinion, are met. Simply put, the examiner is checking that the government is getting its part of the quid pro quo we discussed earlier!
The legal requirements generally include requirements such as novelty, non-obviousness, enablement, and patentable subject matter. We will talk about each of these in turn. As we discuss these, notice how much this discussion circles around the claims, and consider how important it is to draft those claims well!
Novelty
The novelty requirement is a basic check that your invention, as defined in the claims, is not already publicly known. If it was already known, there is no reason for them to give you any benefit for disclosing it! One of the things a patent office will do is perform a search based on your claims to find documents that predate your filing date and that discuss the details of your claims. Often, if the examiner can find a single document (such as a published patent application, technical paper, website, or textbook) that talks about all the details in a claim, they will give you a rejection for lack of novelty.
Non-Obviousness
This requirement is just a way to check that, even if your invention is new, it is sufficiently different from existing technology that it wasn’t effectively already known. Think about combining details or features in a way that someone of ordinary skill in the field of the invention may not have thought of. Often, if the examiner can find everything a patent claim talks about within a few documents found in a search, the examiner will give you an obviousness rejection. The legal grounds for these rejections can be nuanced and often require an understanding of the technical area of the invention.
Enablement
Your application, and more specifically your specification and drawings, must include enough detail to enable someone to make and use your invention, as defined in your claims. Enough detail for someone having an ordinary skill level in the technology area is sufficient. It is not necessary to actually make your product or a prototype, as long as you can give enough detail that someone will know how to make and use it. If your patent application glosses over how important features of your invention work, you may get in trouble with the examiner on this point!
Patentable Subject Matter
Your invention, as defined by your claims, must be a patentable technology. While this is a pretty broad requirement, there are boundaries on what you can claim. For example, you can’t patent a mathematical equation, natural product, abstract idea, or physics phenomenon. This can sometimes be a bit difficult to figure out and is a little outside the scope of this course, especially because this area of law is currently changing. You may need to discuss this requirement with a patent attorney to get a good idea of whether your invention includes patentable subject matter.
Takeaways
Your patent application does have to meet some legal requirements before you can get a patent. This overview gives you an idea of what those are and can help you understand what does or does not belong in a patent application. Some other requirements are that you must list the inventors and that you must have a sufficient written description of each aspect of your claims.
Your attorney will know these and others in great detail, so it is not necessary that you are an expert. But your basic understanding will go a long way toward allowing you to work with your attorney to make good decisions.
Next time, we’ll discuss the examination process in a bit more detail.
Recommended book
“Patents Demystified: An Insider’s Guide to Protecting Ideas and Inventions” by Dylan O. Adams
Notice: This course and its lessons are not, nor are they intended to be, legal or other professional advice. Please seek the advice of a competent attorney or professional for your specific situation.
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