There are essentially five substantive requirements that must be satisfied before any invention can be patented. These requirements together are commonly referred to as the patentability requirements.
Unfortunately, the patentability requirements are frequently misunderstood, including by the United States Supreme Court. For many who are not well versed in patent law one of the reasons it can be confusing when considering patentability is due to the fact that the first of the patentability requirements asks whether the invention exhibits patentable subject matter. This is sometimes phrased in terms of patent eligibility, which leads the many anti-patent zealots and other patent neophytes to erroneously conclude that if an invention is patent eligible then a patent issues. Nothing could be further from the truth, but those who hate the patent system aren’t exactly concerned with facts or reality.
So what is required for an invention to be patented? The subject matter of the invention must be patent eligible, the invention must be useful, it must be new, it cannot be obvious and it must be described with the particularity required so that people of skill in the relevant field can understand what the invention is, make it and use it without engaging in undue experimentation. Let’s take each of these one at a time.
One of the most common questions I receive, dating back to the very beginning of IPWatchdog.com, is whether recipes can be protected by any form of intellectual property. Typically the question presents specifically by a reader asking whether a recipe can be patented, or how once can patent a recipe.
In most cases the typical recipe for a “killer Margarita” or “the best barbeque sauce ever” will not be patentable because they won’t be unique enough, typically failing on the non-obviousness requirement. Of course, the only way to know for sure is to understand how the Patent Office reaches its conclusions relating to what can and cannot be patented. It is certainly possible to obtain a patent on a recipe or food item if there is a unique aspect, perhaps if there is something counter-intuitive or a problem (such as self live or freshness) is being addressed. The trick will be identifying a uniqueness that is not something one would typically think to try.
Over the weekend I wrote an article titled Turning Your Idea into an Invention. In the article I talked about the fact that you do not need to have a prototype, but rather you need to be able to describe your invention with enough detail so that others will be able to understand what you have invented. This is true except in the scenario of a perpetual motion machine, which I acknowledged in the article. I didn’t want to go off on what would have been a lengthy tangent, but I knew as I was typing that paragraph I would circle back and fill in the blanks regarding the law as it pertains to perpetual motion machines.
The laws of physics and nature tell us that it is impossible for a machine to produce more energy than it consumes, which creates a very real impediment to obtaining a patent. Such a machine is characterized as a perpetual motion machine and when claimed as such it is ordinarily and routinely rejected by the United States Patent and Trademark Office. The rejection provided by the Patent Office for a claim that recites a device capable of producing more energy than it consumes is a utility rejection, which is based on the belief that an invention cannot have utility if it does not work.
A patent is a proprietary right granted by the Federal government to an inventor. There are three types of patents available in the United States: (1) a utility patent, which covers the functional aspects of products and processes; (2) a design patent, which covers the ornamental design of useful objects; and (3) a plant patent, which covers a new variety of living plant. Each type of patent confers “the right to exclude others from making, using, offering for sale, or selling” the invention in the United States or “importing” the invention into the United States. It is important to note, however, that patents do not protect ideas, but rather protect inventions and methods that exhibit patentable subject matter.
The United States Constitution grants to the Congress the power to grant patents; this power residing in the Congress is found in Article I, Section 8, Clause 8. Unlike most of the enumerated powers granted to Congress in the Constitution, the Intellectual Property Clause is a qualified grant of power, which does limit Congressional discretion in significant ways. The Congress does not have free reign to decide that patents should be easily or freely given, but rather must limit their exercise of power to the dictates of the clause itself. See Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 146 (1989). See also Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 5 (1966) (“The clause is both a grant of power and a limitation. This qualified authority, unlike the power often exercised in the sixteenth and seventeenth centuries by the English Crown, is limited to the promotion of advances in the ‘useful arts.’”).
Since at least 1998 business methods have been patentable in the United States. This is thanks to the decision of the United States Court of Appeals in State Street Bank & Trust Co. v. Signature Financial Group, Inc., which categorically and unceremoniously did away with what had previously been come to be known as the business method exception to patentability. Essentially, the business method exception said that no method of doing business deserved patent protection. The Federal Circuit, per the iconic Judge Giles Sutherland Rich, pointed out that the business method exception had never been invoked by either the Federal Circuit or its predecessor court the CCPA. Furthermore, the case frequently cited for establishing the business method exception did not ultimately rely on that exception to deny patentability, meaning it was nothing more than dicta. The Court explained that “[s]ince the 1952 Patent Act, business methods have been, and should have been, subject to the same legal requirements for patentability as applied to any other process or method.”
I have not been doing as many obscure patents as I once did, but I have been increasingly hearing from inventors that they miss this feature because humorous patents coupled with a story provide a good learning opportunity. That being the case, I will try and write more about obscure patents and couple them with lessons.
This invention relates to outerwear or rain gear in the form of a cone, which is made of a substantially waterproofed material. Substantially waterproof? Who wants to buy a “substantially waterproof” raincoat? Notwithstanding, the use of that term is fine in patent law as long as it provides some relationship that can be appreciated. I don’t want to get too caught up here with legalities and miss the point that this patent covers a cone shaped garbage bag with arm holes and a face hole. In terms of commercial viability the patent explains that just about anyone would be inclined to have a spare disposable raincoat in their pocket rather than carrying around an umbrella all day long. Again, doesn’t a garbage bag work for this? Furthermore, isn’t everything disposable on some level?
The Michael Jackson lean, from US Patent No. 5,255,452
Earlier today National Public Radio did a brief segment on Morning Edition regarding Michael Jackson the Inventor and the unique patent that covered the creation of an anti-gravity illusion. Morning Edition contacted me yesterday for a brief interview, a portion of which was used in the story this morning on air. Click to Listen (about 1:20). Last week I also spoke with USA Today reporter Dan Vergano, who also wrote an article regarding the Michael Jackson patent, which now might be the most famous patent in the world given all the publicity that seems to be surrounding Jackson-mania. It seems that there is tremendous interest in anything and everything related to Michael Jackson, which speaks volumes about many things. He was certainly an eclectic individual, with a variety of interests. He was creative on many levels, most famously with respect to his music, but he continued to press the envelope with respect to choreography, which is also copyrightable, which seems to have lead to him becoming an inventor.
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