What Can Be Patented?

What can be patented?

The patentable subject matter defined in 35 U.S.C. 101 as any “process, machine, manufacture, or composition of matter. A patent can be granted if it discloses a new product or process, that has an inventive step, and do not seem obvious to a person having ordinary skills in the art (in particular technical field) and has industrial applicability or utility.

The conditions for the novelty are described in 35 U.S.C.  102. Establishing the novelty of an invention is the most vital part and often acts as a hurdle during the prosecution stage.

There are some limitations on the patentable subject matter. For example, some ideas pertaining only to a computer program or business scheme are not patentable. Similarly Abstract Ideas, naturally occurring substances, discovery of new life forms and Invention which are contrary to public order or morality are not patentable.

1. How to distinguish between patentable and non-patentable subject matter.
2. Can I still get a patent on my invention, if I have found a very close prior art?
3. How to check Industrial applicability of my invention.
4. Different Grace period for application filing in different countries.

Why Novelty Search?

In the current age, the patented inventions bring huge monetary benefits to the patent owners. This has led to an increase in patent filing trend over the years. The graph below shows the total number of patent applications filed in the last two decades at the U.S. Patent AND Trademark office. As you can see in 2020 the number of patent application filed has been doubled as compared to the number of patent application filed in the year 2000 (Source: USPTO).

Ownership of patents is generally seen as an essential indicator of a country’s economic growth and the higher value of its industries. The chart below indicates the countries with most patent application filed at their regional patent offices.

The most number of applications were filed at the Chinese patent office followed by USPTO and Japanese patent office. These graphs indicate the growing volume of patent applications across the world and how important it is wisely invest in your idea and obtain protection for it.

There is high probability that the invention you are trying to protect is already patented. Filing a patent is a costly process which includes charges for patentability search, professional patent drafting, patent illustration, filing and examination. The patent application can get rejected if an existing prior art appears during the examination process. This may lead to considerable financial loss to the inventor. Hence, a Novelty search is essential to make sure that an exact prior art does not exist and the potential invention is a patentable subject matter.

A novelty search can help you discover any relevant information that can constitute as a prior art against your invention.  The findings from the Novelty search can help you decide whether to change the scope of the invention/claims or design-around/reverse engineer to make it novel.

Advantages of a Novelty Search:

• Identification of Possible Prior art: Novelty search discovers relevant prior arts related to your invention. Any existing information related to the concerned technology (patents and Non patent literature) which is publicly available can constitute as a prior art. This information can help the inventor to differentiate his invention from the closest possible prior art.
• Drafting a Better Application: The unearthed prior arts can guide you to draft better and broader claims, which emphasize the novelty of your invention.
• Accelerated Prosecution Process: You can cite the relevant prior arts in the patent application and expedite the examination procedure. This will also improve the litigation strength of your application.
• Re-evaluate Costs and efforts: If a prior art explicitly discloses your invention and rejection seems inevitable, then you can abandon the application and dedicate all the resources and time to other projects.