Essentials for Patent Filing: What Do You Need?

Filing a patent application is something you want to make sure you get right. Missteps in the application and drafting phase may remain hidden until you get a rejection from the patent examiner one-to-two years later. Some issues are easily fixable, while others, like not claiming the salable features of your invention, are not. Mistakes happen, but many can be avoided by knowing the patent office’s requirements and having a plan to address them. To get a patent, the USPTO requires your invention to be novel, non-obvious, and useful. Further, the invention must be the type of subject matter that is eligible for a patent. Finally, the patent application must clearly explain how the invention works.

Subject Matter Eligibility 35 USC 101

The USPTO has two criteria to determine if an invention is eligible to receive a patent. First, does the invention fall within one of the four categories of patent eligible subject matter?  

The four categories include:

• Processes: Methods or routines to execute a task or produce something.

• Machines: a concrete thing, made of parts, certain devices, and combinations of devices.

• Manufactures: a tangible object that has been given a new form, quality, or property through artificial or man-made means.

• Compositions of Matter: Chemical compounds, mixtures, or formulations.

Second, is the claimed invention directed to a judicial exception, or does the claim as a whole include additional elements that amount to significantly more than the exception?

The judicial exceptions include:

• Abstract ideas: mathematical concepts, certain methods of organizing human activity, and mental processes.

• Natural phenomena: laws of physics, naturally occurring substances, and natural biological processes.

• Laws of nature: naturally occurring principles and relations, gravity, and E=MC2.

Judicial exceptions to subject matter eligibility are most commonly encountered when trying to patent software. Like software itself, this is an actively evolving area of patent law. It is important to be up to date when trying to navigate software patents.

Utility

The USPTO only considers an invention patentable if it has some utility. This is another relatively low bar to patentability because virtually any physical object can be useful- even if only as a doorstop. Likewise, software for a simple adding machine is technically useful for the task of calculation. The goal here is to claim the invention performs some real-world task and describe how it could be useful to someone in the relevant industry or field. The USPTO‘s mission is to spur innovation by granting patents where the inventions have real-world application and functionality.

Novelty 35 USC section 102

Patents are granted for new inventions. To be considered “new” by the USPTO, your invention just needs to be different from whatever is already available to the public. For example, in a world where only three-legged stools exist, the USPTO would consider a four-legged stool to be novel. This is a relatively low hurdle to overcome and is distinct from the non-obviousness requirement. However, the best way to prepare for either rejection is to ensure your application adequately describes the unique features of the invention.

Non-obviousness 35 USC 103

The USPTO requires inventions to be non-obvious to be patent eligible. To be non-obvious, the invention should involve some sort of inventive step that goes beyond what is merely an expected or trivial enhancement. Non-obviousness is a somewhat subjective determination that the patent examiner makes when they believe it would be obvious to make your invention by combining features from existing inventions (the prior art). Specifically, this assessment determines whether the claimed invention would have been obvious to a person of ordinary skill in the relevant field at the time the patent application was filed. If the examiner believes your invention can be easily derived from a combination of prior art, it may be deemed obvious and the examiner will issue a rejection.

Written description 35 USC 112

To receive a patent, the application must include a written description that explains how the invention works. The description, called the specification, must enable “one skilled in the art” to make and use the invention without undue experimentation. This is the enablement requirement. The specification must also include the best mode contemplated by the inventor of carrying out the invention. Further, the specification should highlight the improvement, if any, over existing systems that the invention claims to achieve. These written description requirements are tied to the deal where the inventor teaches the public how to use the invention in exchange for a 20-year exclusive right to make and distribute the invention.

The specification must include at least one claim that particularly points out the scope of what the inventor claims to have invented. The claims will be examined by the USPTO to form the boundaries of the inventor’s intellectual property. Further, the claims are the basis for determining infringement. Because of their criticality, the USPTO requires claims to be free of indefinite language and correctly formatted.

Drawings and diagrams are not strictly required. However, the USPTO requires drawings to be filed when necessary to understand the subject matter of the patent sought. So, there are a limited number of inventions where drawings wouldn’t be required. It is important to know that it is possible to use the drawings to support a claimed unique feature, even if there is minimal written support for the feature. The USPTO requires black-and-white line drawings. So, make sure to review the requirements for patent drawings.

Conclusion

The USPTO has specific requirements for patent applications. It’s possible to navigate the system alone, but an experienced patent professional can help you develop a roadmap. At Bright-Line IP, our patent professionals can structure your patent application to help reach your IP goals.