Can I Patent This? - Part 2

Last month’s article discussed which types of subject matters are patentable.  However, just because a subject matter (machine, method etc.) may fit within a patentable category, does not necessarily mean that that development is a patentable invention. 

To be patentable, and after first fitting within one of the fields of patentable subject matter, a development must be new, non-obvious and useful.

New
To be considered new, the subject matter must not have been sold, published, or otherwise available to the public before that application is filed.  This includes where the inventor discloses the invention to the public as well when someone else discloses the invention.  A single prior publication can also render a patent not “new” if it discloses every essential element of claimed invention.

This is one of the reasons why it is imperative that a patent application is filed before the invention is disclosed to the public.  Although the inventor may be able to file an application up to one year after the inventor disclosed the invention, this ability is limited to select countries, such as Canada and the US.  In most other countries, no patent protection is available after the invention has been disclosed.  This is also limited only to disclosures by the inventor.

Non-obvious
In addition to being new, the development must also be not obvious to a person of ordinary skill of the art.  This is also referred to as requiring an inventive step.  The person of ordinary skill in the art is expected to have normal skill and knowledge in the field of the invention.  Essentially, if it would have been obvious to this person based on their knowledge and the available prior art to arrive at this invention, it is unpatentable. 

The determination of obviousness is a difficult legal test to apply in addition to being slightly different in most countries.  Recent changes to US law have also somewhat blurred the division between obvious and non-obvious developments.  If there is any doubt about whether your development is obvious, please speak to the author.

Useful
Utility requires the development to actually work.  This is typically the easiest requirement to satisfy.  This requirement is usually met where it can be shown that the device will perform the function it is intended to do.