Before you apply for a patent, ask yourself these simple questions about the following mandates. Remember, the USPTO patent examiner will apply these tests as well.
- Novelty – Has the proposed invention ever been done before in its entirety?
- Utility – Is the invention useful? Does it serve a useful purpose? (It does not have to be better)
- Non-obvious – Is the invention an obvious variation of prior art? It must be non-obvious to someone skilled in the art.
For an invention to be patentable, it must be new as defined in the patent law. Patent law provides that an invention can't be patented if: “(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent,” or “(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country more than one year prior to the application for patent in the United States . . .”
A patent can't be obtained for an idea or suggestion. Rather, the patent is granted, in fact, upon the new machine or manufacture, and not simply upon the idea or suggestion that precedes the invention. A complete description of the actual machine or other subject matter for which a patent is sought is required.
Patent law specifies that the subject matter must be “useful.” The term “useful” denotes that the invention has a “utility,” or a useful purpose, and is operative. A machine which will not operate and perform its intended purpose isn't deemed useful, and so won't qualify for a patent.
Even if you don't find the prior art proving your case, you still won't receive a patent if your invention is very similar to existing ones. Furthermore, a patent may even be refused if the differences between your invention and another invention are blatantly obvious. Your invention must be sufficiently different from what has been used or described before that it may be said to be non-obvious to a person having ordinary skill in technology related to your invention. For instance, substituting one material for another or changing size, are ordinarily not patentable. You can't paint it red and make it twice as big and expect a patent!
Another example of "non-obvious to a person having ordinary skill in the area of technology related to your invention" could be the following. An electronics engineer looks at a circuit board and observes that it is just like another circuit board except that a few parts are substituted. Someone who is not familiar with circuit boards may not understand that the two boards are very similar. Someone with training, however, thinks that it is obvious. You would want the electronics engineer to look at the circuit board that you want to patent and say, "hey, why didn't I think of that!"
Always initiate a patent search for pre-existing patents or references and patents closely resembling your invention. Minimally, search the USPTO data base and search Google using relevant key words. Avoid wasted time, effort, money, and legal issues: First investigate whether your invention is potentially patentable. Follow up by researching other patents. You must conduct a patent search and disclose your findings on the Stevens Invention Disclosure Form. When you apply for a patent, the USPTO will require you to report prior art disclosures.
Submitting prior art and knowledge of similar patents, and showing the differences in outcomes of your invention versus another, lays legal groundwork: A valid invention is presumed eligible for patent. Challengers may perform patent searches on prior art excluded from the inventor's initial art search. Potential investors likely will perform prior art and patent searches to build a legal defense. In short, a wise inventor should always submit all findings of similar prior art and knowledge with his or her application. Why? It's then extremely difficult to discredit your invention when legal disputes arise.
To report and document your idea/invention, Stevens requests that you complete and return the SIT Invention Disclosure Form (Doc. 392kb) to the Office of Innovation and Entrepreneurship (OIE) as early in the discovery process as possible. The essential components of the disclosure document include
- Name of the Inventors
- Title of Invention
- References & Prior Art Search
Upon receipt, the disclosure form is dated, logged for review, and initiates the SIT IP/patent process. This engages the full patent resources of the OIE, outside legal counsel, and the inventor(s). OIE believes that no one better understands more about the invention, technology, and its potential market and commercial applications, than you, the inventor.
One Year Rule
An inventor may be denied a patent if "the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States". Disclosing your invention in the following manner is a bar to obtaining a patent:
- in details sufficient to allow someone skilled (in the pertinent art) to make and use the invention,
- in written form (e.g., an academic journal, seminar presentation handouts, thesis dissertation, or grant proposal), and
- more than one year prior to the filing of a patent application.
This is called an "enabling" disclosure.
Public use can result from demonstrating the invention at a trade show or conference, if based on that demonstration a person skilled (in the pertinent art) could make and use the invention. Public testing of the invention must be conducted with care to avoid that testing constituting a "public use".
Offers to sell the invention, where either party is located in the United States, constitutes a bar to patent protection in the U.S. if made more than one year prior to the patent application filing date. An offer to license rights in the invention does not constitute an offer to sell the invention.
As indicated above, dealings with potential licensees, buyers, or developers can lead to a statutory bar against patent protection. Such persons or organizations must sign confidentiality agreements prior to negotiations.