Bars to Patentability

== DRAFTING IN PROGRESS. INCOMPLETE ==

United States patent law provides for the grant of a patent on a “new” and “useful” invention to inventors. The opposite of these requirements, and the points that are provided in the law1 for evaluating what is “new” and and what is “useful,” are often referred to as “bars” to patentability.

While the various nuances of the law, particularly in how it is applied, can be confusing, the concepts themselves are actually straightforward and basically sensible. When boiled down, the law simply requires that an invention must be new to the public. As discussed elsewhere, the patent system is designed as an exchange: you, the inventor, give the public the details on making your new and useful invention and, in exchange, receive a limited period of exclusive rights to that invention. In order to receive a valuable exclusive right, you must have a valuable disclosure – if the invention is already available to the public, the value of your disclosure is minor to nil.

With that concept in mind, understanding the bars to patentability becomes more of comprehending that they are aspects which help to make up the whole of “new” and “useful,” rather than each being an independent requirement. Patentability is discussed in more detail elsewhere; however, it is helpful to begin understanding the bars to patentability by building out a framework of patentability:

Patentability Checklist

Is it New?

  • Is it Novel?
    • Has it been anticipated?
  • Is it Non-Obvious?
    • Is the improvement one of obviousness to a person skilled in this field?
  • Is it Non-Public?
    • Is it explicitly excluded by ‘statutory bars’ regarding timing of public availability?
    • Within the appropriate grace period, is it:
      • never Patented?
      • never Published?
      • no Public Use?
      • never On-Sale*?
      • never Otherwise Available to the Public?

Is it Useful?

  • Does it have Utility?
  • Is it Non-Abstract?
    • Is it an abstract idea or law of nature falling outside the useful inventions that are eligible for patent protection?
  • Note: The “on-sale” bar is sometimes considered a separate statutory bar that is different from the “available to the public” bar, for historic – and potentially current – reasons. For more information, see the On-Sale Bar

Thus, we can identify five primary bars to patentability:

  1. Anticipation bar
  2. Obviousness bar
  3. Statutory Bar (Public availability/use and On-sale bars)
  4. Utility bar
  5. Abstract bar

In common parlance, the statutory bars – public / on-sale – are those typically being referenced when someone refers to a patentability bar. However, it is helpful to quickly survey all of them in order to gain an understanding of requirements for patentability in context of the entire statute and patent law landscape. Each section is only a brief introduction in order to give a broad overview of potential bars to patentability, and leads to pages containing a more in-depth discussion of each particular patentability requirement and relevant statutes, court cases and precedent, and administrative regulations and policies.

Anticipation Bar

According to 35 U.S.C. 101, an invention must be novel – or new – in order to be patented. Going back to the rationale of the patent system, unless an inventor has a new “process, machine, manufacture, or composition of matter,” 2 or an improvement of one of those classes, they (broadly speaking) don’t have something of proper value to offer in exchange for exclusivity. In other words, exclusivity is only for something the inventor found or ‘created,’ not for something anticipated by already existing and known inventions.

Specifically, anticipation refers to the state of technology at the time of invention. 3 Anticipation is often a relatively straightforward determination, as this bar only requires that it must not be identical to existing technology.4

Quick Test: Anticipation
Is this idea exactly like anything else known?

[icon name=”angle-double-right” class=”” unprefixed_class=””] More about Novelty

Obviousness Bar

Of course, if the only requirement for novelty was that an idea was not identical to any existing invention, patents would be almost easy. An inventor could simply make a minor change – however insignificant and obvious, like changing the color — and then file for a patent. As appealing as this sounds when we’re the one who is trying to market a slightly modified item, which are often very useful and profitable, we are overall very blessed there is an obviousness bar “if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.”5

The obviousness bar is a natural component of the question “is it new to the public?” It is intended to make sure that, once an invention is made public, the entire invention remains public. For example, painting Henry Ford’s Model T barn red would probably be pretty obvious to anybody who preferred red to black; likewise, exchanging a bolt and nut for a screw in an assembled machine typically is an obvious change that should not be able to protected by a patent. The point is to make sure that everyday creativity and adaptation of inventions is preserved,6 while encouraging more difficult, time-consuming, and costly innovation with a limited period of patent protection. In a nutshell, the anticipation bar eliminates exact copying by a single known disclosure (prior art), while the obviousness bar seeks to prevent copying by cobbling together a pretty straightforward combination of aspects of one or multiple known disclosures (prior art).

The Supreme Court has stated that: “If a person of ordinary skill can implement a predictable variation, §103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”7 We can take this a concise working summary of the concept of obviousness. Is the new feature(s) predictable? Would it be something that you would expect anyone in a similar situation to try? Then it may be considered an obvious improvement.

On the other hand, the patent statute does provide for patenting of improvements,8 and makes clear that “[p]atentability shall not be negated by the manner in which the invention was made.”9 In other words, whether you had a ‘flash-of-genius’ one day, or you have made an incremental improvement after long, hard work doesn’t really affect the patentability. As long as it wasn’t an obvious change, it is new, and it is useful, then you are potentially eligible to receive a patent. The key is to identify what makes your solution unique, especially when there are further indications of the invention being nonobvious — such as it being an effective solution to a longstanding need in an area that has not yet been successfully solved in spite of continuing attempts to do so.10

Quick Test: Obviousness
Is this idea exactly a modification of a known item(s) or an application of known technique(s) which I would reasonably expect other ordinary people in this field to make without undue experimentation?

[icon name=”angle-double-right” class=”” unprefixed_class=””] More about Obviousness

Public Availability & Use and On-Sale Bar

A further extension of the concept of a new invention is the public availability and use and on-sale bars.11 These are commonly referred to simply as “statutory bars” (they are specific exclusions described in the law that bar a patent) and describe “certain conditions that can negate the ‘new’ status of an invention”12. In a nutshell, these bars mean that an inventor cannot give the invention to the public long enough for them to reasonably expect that it is available for use, and then try to ‘take it back.’

The public availability and use bar states It also encourages prompt disclosure of inventions, and helps to prevent a sort of ‘extending’ the length of patent protection by delaying filing for a patent. Furthermore, you cannot sell it — even secretly — and then expect to make it public and receive a patent after you’ve already received the benefit of keeping it secret.

Of course, it can be difficult to know whether an invention is workable, practical, and worth the effor of patenting and marketing if we don’t disclose it to anyone, and this is why the statute provides a one year grace period — in most cases, as long as you file an application within one year of the first public disclosure or the first offer to sell, the invention is still patent eligible under the statutory bar.

Note that you may hear about an “absolute novelty bar,” particularly in reference to foreign filing requirements. This concept includes anticipation and obviousness. However, it usually is discussed in the context of public availability/use and on-sale bars (because anticipation and obviousness are usually already provided for in the statutes). Absolute novelty requires that no public disclosure – anticipation, obviousness, public use/availability, on-sale, etc – be made before filing a patent application.13

Utility Bar

Abstract Bar

www.wipo.int/export/sites/www/scp/en/national_laws/grace_period.pdf

1. Limit Disclosure

Do NOT disclose your invention to anybody without a signed non-disclosure agreement (NDA), such as one of those available at IPWatchdog.com. Improper disclosure could easily bar you from ever obtaining a valid patent.

LAW:

  •  

https://www.uspto.gov/web/offices/pac/mpep/mpep-9015-appx-l.html#al_d1fbe1_234ed_52

A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 , if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.

35 USC 103

MPEP 2152.02(d)

https://www.uspto.gov/web/offices/pac/mpep/s2152.html#ch2100_d20033_2254b_3e0

EXPERIMENTAL USE:

Note: Today’s courts still apply the standards in City of Elizabeth, but they also put consid-
erable stress on such things as the nature of control exercised by the inventor and the extent
of any confidentiality agreement covering the use. The Federal Circuit has listed thirteen
factors potentially relevant in assessing experimental use: (1) the necessity for public testing,
(2) the amount of control over the experiment retained by the inventor, (3) the nature of the
invention, (4) the length of the test period, (5) whether payment was made, (6) whether there
was a secrecy obligation, (7) whether records of the experiment were kept, (8) who conducted
the experiment, (9) the degree of commercial exploitation during testing, (10) whether the
invention reasonably requires evaluation under actual conditions of use, (11) whether testing
was systematically performed, (12) whether the inventor continually monitored the invention
during testing, and (13) the nature of contacts made with potential customers.

IP Casebook Chap 20 p738
https://law.duke.edu/cspd/pdf/ipcasebook2018_chap%2020.pdf


Appendix: Relevant Statutes

35 U.S.C. 100: Definitions

When used in this title unless the context otherwise indicates –

  • (a) The term “invention” means invention or discovery.
  • (b) The term “process” means process, art, or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.
  • (c) The terms “United States” and “this country” mean the United States of America, its territories and possessions.
  • (d) The word “patentee” includes not only the patentee to whom the patent was issued but also the successors in title to the patentee.
  • (e) The term “third-party requester” means a person requesting ex parte reexamination under section 302 who is not the patent owner.
  • (f) The term “inventor” means the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.
  • (g) The terms “joint inventor” and “coinventor” mean any 1 of the individuals who invented or discovered the subject matter of a joint invention.
  • (h) The term “joint research agreement” means a written contract, grant, or cooperative agreement entered into by 2 or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention.
  • (i)

     

    • (1) The term “effective filing date” for a claimed invention in a patent or application for patent means—

       

      • (A) if subparagraph (B) does not apply, the actual filing date of the patent or the application for the patent containing a claim to the invention; or

       

      • (B) the filing date of the earliest application for which the patent or application is entitled, as to such invention, to a right of priority under section 119 , 365(a) , 365(b) , 386(a) , or 386(b) or to the benefit of an earlier filing date under section 120 , 121 , 365(c) , or 386(c) .

     

    • (2) The effective filing date for a claimed invention in an application for reissue or reissued patent shall be determined by deeming the claim to the invention to have been contained in the patent for which reissue was sought.
  • (j) The term “claimed invention” means the subject matter defined by a claim in a patent or an application for a patent.

35 U.S.C. 101: Inventions patentable.

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

35 U.S.C. 102: Conditions for patentability; novelty.

(a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless—

  • (1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or
  • (2) the claimed invention was described in a patent issued under section 151 , or in an application for patent published or deemed published under section 122(b) , in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.

(b) EXCEPTIONS.—

  • (1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.—A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—

     

    • (A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or

     

    • (B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
  • (2) DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS.—A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if—

     

    • (A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;

     

    • (B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or

     

    • (C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.

(c) COMMON OWNERSHIP UNDER JOINT RESEARCH AGREEMENTS.—Subject matter disclosed and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person in applying the provisions of subsection (b)(2)(C) if—

  • (1) the subject matter disclosed was developed and the claimed invention was made by, or on behalf of, 1 or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention;
  • (2) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
  • (3) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.

(d) PATENTS AND PUBLISHED APPLICATIONS EFFECTIVE AS PRIOR ART.—For purposes of determining whether a patent or application for patent is prior art to a claimed invention under subsection (a)(2), such patent or application shall be considered to have been effectively filed, with respect to any subject matter described in the patent or application—

  • (1) if paragraph (2) does not apply, as of the actual filing date of the patent or the application for patent; or
  • (2) if the patent or application for patent is entitled to claim a right of priority under section 119 , 365(a) , 365(b) , 386(a) , or 386(b) , or to claim the benefit of an earlier filing date under section 120 , 121 , 365(c) , or 386(c) based upon 1 or more prior filed applications for patent, as of the filing date of the earliest such application that describes the subject matter.

35 U.S.C. 103: Conditions for patentability; non-obvious subject matter.

A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 , if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.

  1. 35 U.S.C. 101, 102, and 103
  2. 35 U.S.C. 101
  3. Utility, Novelty, Statutory Bar, & Nonobviousness. LawShelf Educational Media. Accessed 9/6/2018.
  4. Gene Quinn. Patentability: The Novelty Requirement of 35 U.S.C. 102. IP Watchdog. June 10, 2017. “In essence, in order for a claimed invention to violate this “newness” requirement it must be exactly identical to the prior art.”
  5. 35 U.S.C. 103
  6. Neal Solomon. The Problem of Obviousness. IP Watchdog. August 3, 2017. “The main aim of introducing the idea of obviousness is to prevent an invention on a basic scientific advance that may include standard knowledge of a field.”
  7. MPEP 2141.I, quoting KSR International Co. v. Teleflex Inc. (KSR), 550 U.S. 398, 82 USPQ2d 1385 (2007).
  8. 35 U.S.C. 101
  9. 35 U.S.C. 103
  10. Gene Quinn. Understanding Obviousness: John Deere and the Basics. IP Watchdog. October 10, 2015. “When approaching an obviousness determination it is essential to understand what makes the invention unique.” … “One particularly strong secondary consideration is long-felt but unresolved need. … [A] long felt, well-documented need that becomes met is excellent evidence to demonstrate that an invention is non-obvious.”
  11. 35 U.S.C. 102
  12. Brian Hoffman. Watch Out For Statutory Bars – Don’t Lose Your Patent Rights Before You Even File The Application. Fenwick & West LLP. 2015.
  13. Vic Lin. What are critical deadlines to remember if my patent application has not been filed? Patent Trademark Blog | IP Blog Q&A. Accessed 9/6/2018. “Followed by most foreign countries, the “absolute novelty bar” states that the filing date of the first patent filing for the invention, known as the “priority date,” must precede the earliest date of public disclosure.”