What are the requirements for a patentable invention?

Your concept may be patentable if it meets two conditions:

  1. eligibility; and
  2. uniqueness.

What is patent eligible?

The types of inventions that have a higher risk of rejection based on ineligible subject matter include software, computer related technology and business methods. While it is still possible to patent software and business method inventions, you may face a potential battle with the examiner on Section 101 rejections. With utility patents, eligible subject matter generally excludes inventions that consist of laws of nature, natural principles, natural phenomena and natural products with a few exceptions.

What is unique in a design vs. utility patent application?

The requirement of uniqueness is different in a design patent application versus a utility patent application. If you want to protect how your invention looks, then file a design patent application. In order to have a patentable design, the appearance of your invention must be unique, such as the 3-dimensional shape of an object or the 2-dimensional graphic design or artwork as shown on a product.

If you want to protect how your invention works (e.g., functions, structures or processes), then file a utility patent application, which can be either a provisional or nonprovisional application. Uniqueness in a utility patent application involves both novelty and non-obviousness.

How can a patentability search help the patent application process?

Patentability searches can help assess the level of novelty of your invention depending upon the prior art found. Such novelty searches, however, cannot guarantee success because it’s very difficult to predict what additional prior art the patent examiner may find or how the examiner will apply the prior art reference to reject your patent claims. Basically, patentability search results can provide a definitive no, but not a definitive yes. Novelty searches can also provide a roadmap for claiming your invention by focusing on key features that were not found in the search.

If you’re willing to try searching patents yourself, try Google Patents and freepatentsonline.com. Since these searches on these sites are based on keywords, use different synonyms and different combinations of terms to search for relevant prior art.

Need help with filing a patent application?

If you’re ready to move forward, see this post on filing a utility nonprovisional application.

Email vlin@icaplaw.com anytime or call (949) 223-9623 to find out how we can help.

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Vic Lin

Startup Patent Attorney, Cofounder at Innovation Capital Law Group
We align ourselves with Davids fighting Goliaths. Our registered patent attorneys help innovators get IP that drives funding, growth and sales. Email or call us so we can get to work on your IP: (949) 223-9623 | vlin@icaplaw.com

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