Filing a Patent: What are the Basic Requirements of Patentability?
To get a patent (to be patentable), your invention must be new, useful, and non-obvious. While all three of these requirements are critical, most of the fighting seems to be around the new and non-obvious requirements.
New essentially means that your invention is not already publicly known. Why must it be new? Well, one way of looking at is that when you get a patent, you’re making a deal with the government; you give a thorough description of your new invention such that anyone who is reasonably skilled in your field can actually make it (society gains the benefit of new and useful technology) and, in return, the government gives you a monopoly of limited duration (typically for 20 years from the date you filed your patent application). A monopoly of limited duration can be extremely valuable. With that in mind, you can appreciate why you must give something valuable in return. If what you’re giving is not new, if it’s already known (such as by being published anywhere in the world), then it doesn’t have any value. And, since it doesn’t have any value, the government has no need to give you anything in return, no need to give you a monopoly of limited duration.
Non-obvious means that based upon what is already publicly known, your invention is not obvious to someone reasonably skilled in your field. Again, just as in the case where your inventive contribution is not new, therefore not valuable, if your invention is technically new but so obvious that you’re not making a valuable innovative contribution to society, it’s equally not valuable and not worthy of being given a monopoly of limited duration. Now, the question of whether something is obvious is surprisingly complicated. It didn’t used to be so complicated. In the past, there was a US Supreme Court case called Graham V. John Deere Co which created a fairly straight forward obviousness test. But, a later case by the US Supreme Court in KSR V. Teflex made that analysis a bit more complicated. KSR V. Teflex made that analysis a bit more complicated. I found a fantastic article describing the current state of the obviousness analysis at one of my favorite IP sites called, IP Watchdog.
Now, whether it’s assessing whether an invention is new or non-obvious, the primary way that patent examiners determine what is already known to the public is by examining prior publications. If relevant and timely, these prior publications, or prior art references as they’re called in the industry, can be used by patent examiners to conclude that your invention is not new or is obvious, and, consequently, reject your patent application (actually, it’s your claims that would be rejected).