So what are the legal requirements to file a patent for your brilliant new invention? It depends on which type of patent you are trying to file but there are the same basic legal requirements for all of them.
First and foremost, it must fit into a Statutory Class. That means the invention must fit into one of five classes established by the PTO. This means that the invention could be: a process (method), a machine, an article of manufacture, a composition, or a new use for one of the first four. Legally, this last class fits into process, but the author of "Patent it Yourself" makes a distinction to make it more prominent. One thing to note here since we are in the middle of the tech start-up era is that "processes" as described above would also include software.
Second, the invention must have utility. This means that it must be useful and in the case of design patents it must be considered ornamental.
Third, is that the invention must be novel. Meaning it must be different in any way from all previous inventions that came before it.
Lastly, and this one we definitely touched on a bit in class is that the invention must be unobvious. Like Dr. Lavian said, unobviousness is a complicated issue. But Patent Attorney David Pressman defines it as the following, "Will the PTO consider that the invention is unobvious from the standpoint of someone who has ordinary skill in the specific technology involved in the new invention..."
A lot of patent applications that go through the process pass the first three steps with relative ease. It is the unobviousness factor that sees a lot of patents get rejected at the PTO. Now, plant and design patents are subject to the same scrutiny by the law. Design patent applications are not put through the same unobviousness test however because the aesthetics of the design are more relevant than the actual functionality. Plant patents too have a couple additional requirements, these are that the plant must be asexually reproduced and that the plant must be a new variety.
** Please keep in mind that this is just a broad and general overview of some of the legal requirements for an invention. As I read on into the chapter, the technicalities it seemed were endless but if you are interested you should definitely read more. There are some very specific cases that you guys will find interesting. For example, there is something called a "whimsical invention" where the PTO will reject an application because it is completely nonsensical even if it is useful in some weird way. Other inventions categorized in a special way are: inventions used for illegal purposes, non operable inventions, nuclear weapons, theoretical phenomena, aesthetic purpose, tax-avoidance schemes, or human organisms. Interesting stuff!
First and foremost, it must fit into a Statutory Class. That means the invention must fit into one of five classes established by the PTO. This means that the invention could be: a process (method), a machine, an article of manufacture, a composition, or a new use for one of the first four. Legally, this last class fits into process, but the author of "Patent it Yourself" makes a distinction to make it more prominent. One thing to note here since we are in the middle of the tech start-up era is that "processes" as described above would also include software.
Second, the invention must have utility. This means that it must be useful and in the case of design patents it must be considered ornamental.
Third, is that the invention must be novel. Meaning it must be different in any way from all previous inventions that came before it.
Lastly, and this one we definitely touched on a bit in class is that the invention must be unobvious. Like Dr. Lavian said, unobviousness is a complicated issue. But Patent Attorney David Pressman defines it as the following, "Will the PTO consider that the invention is unobvious from the standpoint of someone who has ordinary skill in the specific technology involved in the new invention..."
A lot of patent applications that go through the process pass the first three steps with relative ease. It is the unobviousness factor that sees a lot of patents get rejected at the PTO. Now, plant and design patents are subject to the same scrutiny by the law. Design patent applications are not put through the same unobviousness test however because the aesthetics of the design are more relevant than the actual functionality. Plant patents too have a couple additional requirements, these are that the plant must be asexually reproduced and that the plant must be a new variety.
** Please keep in mind that this is just a broad and general overview of some of the legal requirements for an invention. As I read on into the chapter, the technicalities it seemed were endless but if you are interested you should definitely read more. There are some very specific cases that you guys will find interesting. For example, there is something called a "whimsical invention" where the PTO will reject an application because it is completely nonsensical even if it is useful in some weird way. Other inventions categorized in a special way are: inventions used for illegal purposes, non operable inventions, nuclear weapons, theoretical phenomena, aesthetic purpose, tax-avoidance schemes, or human organisms. Interesting stuff!
