Determining Patentability

Once it has been determined that an invention is the subject matter for a patent (a machine, process, composition of matter, manufacture, or improvement therefor), the patent must pass two tests: it must be new and useful. The newness test is a two-part test: novelty and non-obviousness.


For an invention to be patentable, it must be useful. This means that it must perform a function that has a purpose. An invention need only be useful to some people, it does not have to be useful to all of people. This is the easiest patentability test to satisfy.


For a patent to be considered new it must be both novel and non-obvious.


The first part of the newness test is novelty. An invention cannot be known or used by others in the United States. The invention cannot be disclosed in a printed publication here or abroad before invention by the inventor. The invention cannot be in public use or on sale within the United States more than one year before the inventor applies for a patent in the United States.

Novelty means the invention cannot exist prior to the invention by the inventor anywhere in the world. This is a fairly difficult test to satisfy, and one can never be absolutely sure that an invention is truely novel. Normally one conducts a literature search and a search of the archives at the United States Patent and Trademark Office. This is usually an adequate search since the archives at the Patent and Trademark Office is considered one the best repositories of knowledge in the world, but it must be remembered that the novelty test encompasses the entire world. This means that an obscure patent or publication existing in an remote location can render a patent invalid.


The final test for patentability is the non-obvious test. An invention is obvious when “the differences between the subject matter sought to be patented are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art. . .”

There are three important points to be considered in this test:

  1. The invention is tested as a whole. The examiner cannot look for obviousness element by element, but must consider the entire invention in the determination.
  2. The differences must have been obvious at the time of invention. Many great inventions are obvious after they have been explained or shown, but not obvious before invention.
  3. The differences must be obvious to a person having ordinary skill in the art as opposed to an expert in the field. This is because many invention are created by people who work outside the field of the invention.
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