Patentability Overview: When can an Invention be Patented?

By Gene Quinn
June 2, 2012

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.


Patentable Subject Matter – 35 U.S.C. 101

The first and certainly the most basic question with respect to patentability is whether or not the claimed invention exhibits patent eligible subject matter. In other words, is the claimed invention something that the patent laws are designed to protect?  This question is a threshold one and historically in the United States virtually everything has been viewed as being patent eligible subject matter.  This includes living matter, genes, software and even business methods that are tethered to some kind of tangible apparatus.

The Legislative History of the 1952 Patent Act inform us that Congress intended the patentable subject matter referred to in §101 to “include anything under the sun that is made by man.” Why would this be the case?  If an entire category of innovation is deemed patent ineligible then no patent could issue even if the innovation is useful, new, non-obvious and described so as to inform the public.  Determining something is patent ineligible subject matter cuts innovation off at the knees.  This is why the United States is home to the world’s biotechnology industry, as well as home to the world’s computer and Internet industries.  Industries do not blossom where patent rights are prohibited.

Given that Congress intended everything made through human intervention to be patentable it is typically more helpful when discussing patentable subject matter to search for that which cannot be patented. In this regard the United States Supreme Court has repeatedly and consistently stated that there are only three categories of subject matter for which one may not obtain patent protection: (1) laws of nature; (2) natural phenomena; and (3) abstract ideas.

More recently the Supreme Court has also said that methods that claim a law of nature and only add conventional steps to differentiate from the law of nature are also patent ineligible.  See Killing Industry: The Supreme Court Blows Mayo v. Prometheus.  Those familiar with Mayo v. Prometheus know that the Supreme Court deviated from precedent and ignored the 1952 Legislative History and the Patent laws enacted by Congress.  For most the “Prometheus anomaly” can be saved for another day, sticking to the way things have always been, and the way they will be moving forward unless you write a claim identical to the poorly drafted claim in Prometheus, which you really ought not do.

The Utility Requirement – 35 U.S.C. 101

To satisfy the requirements of §101 it is not only necessary to demonstrate that the subject matter of the invention is patentable, but the patentee is also required to demonstrate that the claimed invention is “useful” for some purpose. This statement of utility, while necessary, can be made either explicitly or implicitly. The utility requirement finds its foundation in the belief that an invention that is inoperative is not a “useful” invention within the meaning of §101 and, therefore, does not deserve patent protection. For a claimed invention to violate the utility requirement it must be “totally incapable of achieving a useful result.” Therefore, an invention that is at least partially useful will passes muster under §101 and the PTO will not issue a utility rejection.

Notwithstanding the extremely low utility hurdle, claimed inventions can and do fail the utility requirement. An invention that fails the utility requirement does so for one of two reasons. First, an applicant can fail to identify any specific utility for the invention or fail to disclose enough information about the invention to make its utility immediately apparent to those familiar with the technological field of the invention. Second, the applicant’s asserted utility for the invention is not credible. A good example of the later is an invention claiming a perpetual motion machine.

It is important to remember, however, that the PTO has the initial burden of challenging the applicants assertion of utility. This is true because the applicant’s assertion of utility in the disclosure will be initially presumed to be correct. Only if the PTO provides evidence showing that one of ordinary skill in the art would reasonably doubt the asserted utility does the burden shift to the applicant to provide rebuttal evidence sufficient to convince the PTO of the invention’s asserted utility.

An assertion by the patentee regarding utility will be credible unless: (1) the logic underlying the assertion is seriously flawed; or (2) the facts upon which the assertion is based are inconsistent with the logic underlying the assertion. Credibility as used in this context refers to the reliability of the statement based on the logic and facts that are offered by the applicant to support the assertion of utility. One situation where an assertion of utility would not be considered credible is where a person of ordinary skill would consider the assertion to be incredible in view of contemporary knowledge and where the applicant has not provided any information to counter that which the contemporary knowledge suggests. Again, a perpetual motion machine is a good example.  See The Patent Law of Perpetual Motion.

The Novelty Requirement – 35 U.S.C. 102

Despite the impression given by the low hurdle presented by the first two patentability requirements, not every invention is patentable. One of the most common problems for applications is §102, which sets forth the doctrine of anticipation by requiring novelty of invention. Essentially, §102 requires the applicant for the patent to demonstrate that the invention is new. In essence, in order for an invention to violate this “newness” requirement it must be exactly identical to the prior art.

In order to understand the requirements of §102 it will be helpful to explore the concept of anticipation in a little detail. A claim is said to be “anticipated” if comparison of the claimed invention with a prior art reference reveals that each and every element in the claim under attack is shown or described, organized, and functioning in substantially the same manner as in the prior art reference. Anticipation is perhaps most easily understood as the converse of infringement: “That which will infringe, if later, will anticipate, if earlier.” So one way to look at whether your invention is new, as is required under the meaning of §102, is to ask whether your invention would infringe another patent already issued. In the case where the reference is not a patent but is a printed publication ask whether your invention would infringe if the printed publication were an issued patent instead of just a printed publication.

The standard for anticipation (and hence for newness) is a rigorous one; requiring that every element of the claimed invention, as arranged in the claim, be disclosed either specifically or inherently by a single prior art reference. To be sure, every element of the challenged claim need not be expressly delineated in a single prior art reference, but may be inherently disclosed by prior art if “the prior art necessarily functions in accordance with the limitations” of the challenged claim. However, if the court must go beyond a single prior art reference, the proper challenge is under §103 for obviousness, not §102 for novelty. A reference will, however, anticipate a claim if it discloses the claimed invention such that a skilled artisan could take its teachings in combination with his own knowledge of the particular art and be in possession of the invention.

U.S. law on novelty is, however, rather peculiar at first glance.  Not all references, knowledge or events that can demonstrate that an invention is “old” or already known can be used by patent examiners to reject a patent claim. Before we go to far down this path lets set some definitive rules:

  • If the invention in question was described in a patent issued anywhere in the world prior to the patent applicant inventing it, then no patent can be obtained.
  • If the invention in question was described in a printed publication published anywhere in the world prior to the patent applicant inventing it, then no patent can be obtained.
  • If the invention were publicly known in the US, but not necessarily patented or published, prior to the patent applicant inventing it, then no patent can be obtained.

In each of these three cases we would say that the earlier reference of knowledge is prior art that prevents a patent from now issuing.

Now some more rules:

  • If the invention in question was described in a patent issued anywhere in the world more than 12 months prior to a US application being filed, then no patent can be obtained.
  • If the invention in question was described in a printed publication published anywhere in the world more than 12 months prior to a US application being filed, then no patent can be obtained.
  • If the invention in question was publicly used in the US more than 12 months prior to a US application being filed, then no patent can be obtained.
  • If the device, machine or compound in question was offered for sale in the US more than 12 months prior to a US application being filed, then no patent can be obtained.

In each of these four cases we would also say that the earlier reference, knowledge or event is prior art that prevents a patent from now issuing, but this time not because the invention was not new, but rather because an application was made in the US too late!

To complicate matters even further, this is the law relative to novelty that will be in place up to and including March 15, 2013.  On March 16, 2013, we enter a brave new world thanks to the America Invents Act (AIA).  Effective March 16, 2013, the United States becomes a first to file country, and the law of novelty will substantially change.

CLICK HERE to Continue Reading an overview discussion of Obviousness (35 USC 103) and what makes up an adequate description (35 USC 112).

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of Read more.

Discuss this

There are currently 4 Comments comments.

  1. Stan E. Delo June 2, 2012 4:45 pm

    Excellent educational discourse Gene. You clarified things quite a lot for me. Maybe I should try to send a link to all of our Supreme Justices, on the off chance that they might actually read and consider what you have to say from an objective perspective.


  2. Greg Harris December 4, 2013 6:58 am

    Your article was very helpful as I continue to work on and evaluate the development of a couple new products for the golf industry. Thank you!