After submitting an application for registration of patents in the U.S. Patent and Trademark Office (USPTO), a patent examiner will study the submission. The researcher will assess your application for registration of patents basing on several criteria.
The three primary tests that an application for patent registration must pass in order to qualify for patent issuance are:
1. The invention is one of the types of inventions allowed by law.
2. The invention is original or novel.
3. The invention is useful.
Patent law allows four types of inventions to be registered as a patent:
1. A process is typically a method or procedure for accomplishing some tangible result.
2. A machine is made or constructed, and not something occurring naturally.
3. An article of manufacture is something which is created by a manufacturing process.
4. A composition of matter is created by uniting various elements.
It is well known that an invention must be new or novel in order to be eligible for patent registration. I wish I could just give you a definition of what is considered new, but I can’t do that. The reason I can’t do that is because the patent law states the definition of newness as a negative, meaning that instead of saying what it is, the law says that it is new unless it runs afoul of one of the stated things that make it not new.
Perhaps because of the negative definition, getting into the details of what is new or not new has been heavily disputed in the United States Patent and Trademark Office and in the courts. Thus, because of these many disputes, it is beyond the scope of this article to explore all of the variations of what is new.
To give you an idea of what is considered new for a patent, the invention should be invented first, not published or for-sale 12 months before the application for patent registration was filed.
Another flavor of newness is what we call “obviousness”. It is human nature that once you’ve seen what another person has created, your mind immediately starts thinking of how to either improve it or to come up with alternatives to it. Because of this, the patent law requires that in order to be eligible for patent, your invention cannot be obvious over the prior invention or group of inventions.
The non-obvious requirement for patent is stated by saying that if the new invention was “obvious” to a person who is of ordinary skill in the art of the invention, then the application for patent registration is not entitled to a patent.
The Patent Examiner at the USPTO evaluates your application using these three basic criteria. But since each criteria has to be applied to each application for patent registration, applying the criteria requires some guidance for the Examiner in the form of rules and procedures that the Examiner must follow.
The rules that a Patent Examiner must follow in evaluating your application for patent registration are codified in the United States Code of Federal Regulations and the Code of Federal Rules. The USPTO publishes their own 2,000 plus page Manual of Patent Examining Procedure that explains the federal rules for the Examiner.