Is Your Invention Patentable?
1. SUBJECT MATTER-SECTION 101
Sections 100 and 101 of the Patent Act together define the scope of patentable subject matter. Section 101, the more general provision, announces that patents are available for any “new and useful process, machine, manufacture or composition of matter, or any useful improvement thereof.” “New” and “useful” denote standards of inventiveness, which for this discussion will be concerned with the kinds of innovations that are eligible for utility patent protection: machines, manufactures, compositions of matter, processes, and improvement thereof.
Machines, manufactures, and compositions of matter are generally easy to recognize. They are things such as steam engines, pencils, and aspirin. “Process” requires slightly more explanation. One definition was provided in an early, much-cited case, Cochrane v. Deener:
“A process is a mode of treatment of certain materials to produce a given result. It is an act, or a series of acts, performed upon the subject matter to be transformed and reduced to a different state of thing.”
This definition works well when transformations are physical in nature. However, modern inventions often involve information products, such as computer or genetic code. Transformations of information are more difficult to analyze.
“Process” also has a second definition, provided by §100:
“The term ‘process’ means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.”
This provision is an important addition to patent law, since it enables the law to motivate the search of new ways to use old materials. Although an inventor cannot obtain a patent on the actual material, since it is not new, a process patent can be obtained on a new way to use it. A process patent is not usually, as valuable as a product patent because it is difficult to monitor its use. Nonetheless, it is better to have this limited right, than no legal ability to capture any of the benefits of inventing the new use. Additionally, in certain situations, a process patent can be as important as a product patent. US patent law is mainly applicable to acts occurring on US soil. Nonetheless, the importation into the United States of a nonpatented product manufactured abroad is considered infringement when the product is made with a process that is protected by a US patent. Rights over processes are particularly important in biotechnology, where standard nonpatented products can often be made more cheaply and at greater purity with new patented biological processes.
Important economic consequences flow from the ability to acquire a patent on an improvement. It is important to understand that a patent on an improvement is distinct from rights to the technology that is being improved upon. Thus, if the underlying technology is in the public domain, only those who wish to practice the improved version need the patentee’s permission. However, if the underlying technology is also patented, then it is sometimes the case that the two patents will block each other: that anyone who wishes to use the improvement will need permission from both patentees. By the same token, if the patentees themselves want to utilize the improvement or license other to do so, they will need each other’s permission (“cross licenses”). The need for joint permission creates an opportunity for the two inventors to bargain with one another, hopefully in a manner that leads to an allocation of profits that reflects the contributions that each made to the field.
2. NOVELTY-SECTION 102
Among other things, §102 refines the requirement, set out in §101, that the invention be “new.” Unfortunately, this section does several other things as well. Indeed, it is one of the most confusingly drafted provision in the United State Code (USC) laying out four distinct concepts in no particular order: novelty (newness), statutory bar, priority, and originality. Equally confusing is the fact that the novelty provisions of §102 are not the only place in the Patent Act where “new” is interpreted. Section 103 provides further elaboration on the concept. It requires that the invention must be more than an obvious improvement over the technology that preceded it.
In some ways, the requirement that the invention be new is easy to justify. An old invention—or as patent lawyers say, an invention that is “anticipated by the prior art”—is a discovery that, in some sense, already exists in the storehouse of knowledge. People who work in the field know of it (or can find it), can use it, and can bring it to the public’s attention. There is no need to encourage someone to invent this invention, and therefore there is no need to incur the costs associated with exclusivity. Moreover, if an invention is old, there may be people who are already relying on its free availability. Subsequent issuance of a patent covering the invention would frustrate these users’ expectations.
The things considered relevant to the novelty inquiry go by a variety of names. The ones most often seen are: “prior art,” “references,” and “disclosures.” What counts as a reference (prior art/disclosure) is enumerated in the provision of §102 that describe activity occurring “before the invention … by the applicant.” Under §102(a), it includes knowledge or use of the invention by another in the United States, or publication or patenting anywhere in the world. Under §102(e), it includes disclosures contained in an application for a US patent—so long as the application eventually results in a patent. Finally, under the first sentence of 102(g)(2), it includes inventions by another person in the United States—so long as that person that person has not abandoned, suppressed, or concealed the invention. These provisions are not mutually exclusive. An invention can, all at the same time, be made by another (who did not abandon it), it can be disseminated within the United States, it can be described in print, and it can be disclosed in a pending application. However, if even only of these events occurs, the applicant cannot receive a patent.
3. NONOBVIOUSNESS-SECTION 103
When the patent law was recodified in 1952, nonobviousness was set out as a statutory requirement for the first time. The new provision, §103, did not, however, mark a major change in the law, since the courts had long imposed as a matter of common law a requirement of “invention” closely akin to what is now called nonobviousness.
It makes sense that an intellectual property system that requires novelty might also impose a condition of nonobviousness. The novelty provision is intended to secure to the public domain inventions that were effectively available to the public prior to the intervention of the applicant. However, the test for novelty is rather limited. After all, every element of the invention must be revealed in a single prior disclosure. This limitation means that some innovations that are arguably available to the public escape the novelty requirement. These are the inventions that, while not revealed in a single source, are either effectively disclosed in a series of references or represent minor changes in existing technology. It is not unreasonable or overly costly to expect ordinary artisans to pull together the things they learn, and even to make modest advances. The nonobviousness requirement makes these kinds of advances unpatentable.
Section 103(a) renders unpatentable inventions that “would have been obvious at the time the invention was made to a person having ordinary skill in the art.” For instance, if the subject matter of a patent application requires an understanding of metallurgy, and the proposed invention would be recognized by a metallurgist with average skills and knowledge of the “art” of metallurgy as being an obvious variation on an existing invention, the proposed new invention would be rendered unpatentable due to its “obviousness.”
For the Inventor