A post from our student blogger Catie
Before a patent agent can begin drafting a patent application, it is important to determine if the idea is patentable in the first place! The first step in this process is to ask “What constitutes an invention as patentable?” “Is this idea worthwhile in terms of going forward with filing a patent application?” These are pivotally important points to consider, and they should be thoroughly investigated before any application drafting occurs. This is very necessary because it is in the best interest of everyone involved to only draft a patent application of an invention that is indeed patentable. If not, tens of thousands of dollars and countless hours of work are at stake of being lost, because a patent application of an unsuitable invention will be rejected. Not to mention, it would make for a heartbroken inventor and a frustrated patent agent!
There are three main characteristics that determine whether or not an idea is patentable:
Is the invention new? An inventor’s idea must be novel in order to be eligible for a patent. This means that the process, machine, composition of matter, or manufacture to be patented must be the first of its kind and cannot be of content that is already patented, published, or available on the market. For this reason, patent searching is a huge part of what a patent agent’s job entails. The patent agent, with some help and guidance from the inventor, must perform a thorough search of existing literature to determine if the inventor’s idea is original enough to be patented.
Is the invention useful? This may be shocking, but yes, a patentable invention must have a useful result or method to reach a result! It may be the easiest of the three characteristics, as most inventors purely aim to create an invention that benefits consumers, laborers, and the general public. However, it is important to know that one cannot patent natural phenomena, sheer discoveries of nature, or abstract ideas. The invention must have a physical, executable method or use. The literature search that the patent agent performs to determine novelty of the invention may also be helpful for finding supporting information to demonstrate why the new invention may be effective or may resolve a problem posed by previous inventions.
Is the invention non-obvious? This may be the most difficult of the three characteristics, as it is fairly ambiguous and subjective. The term PHOSITA, or ‘Person Having Ordinary Skill In The Art’, is used to explain this characteristic. If a PHOSITA from the field pertaining to the invention would be able to say that the invention in question is an obvious step up or adjustment to what is already known and existing in the field, then it should be deemed obvious and will not be granted a patent. Really, the key is that as long as the invention can be proved to contain a legitimately new result, it should be considered patentable.