The Patent and Trademark Office ("PTO") is the governmental agency that
reviews patent applications under the various provisions of the United States patent
laws as set forth in the statutes and court decisions pertaining to patentability. The
primary requirements for an invention to be patentable, assuming proper subject
matter, are summarized below:
a) Inventorship. The applicant must be the inventor or one of several
inventors. As explained in more detail in a separate section, an inventor is an
individual who participated in the formation of the basic concepts of the invention and
contributed to the definite and permanent idea of the complete and operative invention.
The invention cannot have derived from a person other than the applicant.
b) Useful. The invention must be useful. Usefulness requires that the
invention actually work and be legal somewhere in the United States for some
purpose. Non-useful items include art, music and other cultural subjects that are
enjoyed for the way they make a person feel, not for their utility.
c) Novel. The invention must be novel. Novelty requires that the
invention was not known prior to being invented by the inventor. Novelty is
established by showing that no patent or pre-existing reference (such as a publication)
discloses each and every element of the invention. An inventor's own actions can
destroy novelty (see the Loss of Patentability Rights discussion).
d) Non-obvious. The invention must not be obvious at the time of
conception to a person having ordinary skill in the relevant field of art. If such a
person would consider the invention to be obvious in light of the available references,
without the aid of hindsight, the PTO cannot issue a patent. Non-obviousness requires
the specific structural features of the invention not be found in the prior art. To
determine whether the invention is obvious, the PTO analyzes the prior art (as set forth
in prior patents and non-patent literature) to determine whether a person of ordinary
skill in that art would find it obvious to combine various aspects or components of the
prior art to arrive at the invention. The requirement of non-obviousness is typically the
most difficult hurdle for the inventor to overcome.
Many people mistakenly believe that certain items are required in order to apply
for a patent. These are often referred to as non-requirements, the most common of
which are listed below:
a) Prototype. It is not necessary to build a prototype or have a
working model of the invention in order to receive a patent. A patent can be obtained
as long as the invention's workability is demonstrable or can be proven in theory on
b) Market Success. Whether a product is or will be a market success
is not determinative of its patentability. Many products are not patentable, but are
very successful in the market. Unfortunately, the reverse is also true.
c) Patent Search. An inventor is not required to perform or have
performed a patentability search for his or her invention. Once the patent application
is on file, the PTO will perform its own search. Patent searches are, however, useful
in determining whether to file a patent application and for evaluating other technology
that may have application to the inventor's invention.