Patent Law Qualifications

Patent Law Qualifications in the United States

Introduction to Patent Law Qualifications

To qualify for a patent, the invention must meet three basic tests. First, it must be “novel,” meaning that the invention did not previously exist. If the patent examiner finds that the proposed invention has already been described in previous patents or written about in scientific magazines, the PTO will declare that the invention has been “anticipated.” In such a case, the patent will be denied. Second, the invention must be “non-obvious,” which means that the invention must be a significant improvement to existing technology. Simple changes to previously known devices do not comprise a patentable invention. Finally, the proposed invention must be “useful.” Legal experts commonly interpret this to mean that no patent will be granted for inventions that can only be used for an illegal or immoral purpose.

Some types of discoveries are not patentable. No one can obtain a patent on a law of nature or a scientific principle even if he or she is the first one to discover it. For example, Isaac Newton could not have obtained a patent on the laws of gravity, and Albert Einstein could not have patented his formula for relativity, E=mc2.

It is permissible, however, to obtain a patent on an altered or purified form of a natural substance. Under this rule, if a mineral only occurs in nature with impurities, a person who invents a completely impurity-free version of the mineral can get a patent both on the pure mineral and on the method of purifying it.

This rule also permits firms in the biotechnology industry to obtain patents on purified deoxyribonucleic acid (DNA) gene sequences. DNA is the basic unit of heredity and carries the information needed to direct the synthesis and replication of proteins. Scientists have learned that certain sequences of nucleic acids in strands of DNA could have specific medical benefits or applications. Purified DNA gene sequences are manufactured by a process known as recombinant DNA technology. See also Genetic Engineering.

However, the patenting of DNA is controversial because these gene sequences are often the raw materials for developing a wide range of future medical inventions. A patent on a DNA strand thus can confer extremely broad rights. Consequently, some members of the scientific community have argued that the tests for patenting DNA should be quite stringent to avoid hindering future scientific progress.

Traditionally, U.S. law did not grant patents on methods of doing business, such as financial management systems or the process for conducting an Internet auction. Starting in the late 1990s, however, the courts changed this rule. Since then, many patents have been granted for business methods. Some critics have claimed that the PTO has been too lenient in granting patents of this type, arguing that many of the methods that have been given patents are not really novel and non-obvious as the law requires. Congress has considered legislation to reform the way business-method patents are reviewed, but thus far it has not adopted any new laws.” (1)

Qualities of Patentable Inventions

Note: The following information about Patents, and the Patent System. is from the Cyclopaedia of Political Science, Political Economy, and the Political History of the United States by the Best American and European Writers (1899).

The essential qualities of a patentable invention are very broadly indicated in the statute. The terms employed in the act are invented or discovered, new and useful art, machine, etc., and the question, what constitutes a patentable invention, is therefore to be answered by referring to the adjudications of English and American courts, which constitute the common law of the patent system. It should be noted first, that invented and discovered are synonymous in the patent law; novelty and utility, required by our statute, have always been held vitally essential qualities of patentable inventions; and the degree of novelty and utility -the sufficiency of invention- necessary to support a patent, has been determined by the courts in the numerous cases which have presented these questions for adjudication. The degree of absolute utility required in an invention is, however, slight. It is only necessary that the invention shall not be positively trivial, nor, on the other hand, noxious to public health or morals.

The principal inquiry in patent law is therefore into the novelty of the invention, for the whole theory upon which the patent system rests, is that the patentee offers the world something new in consideration for his exclusive patent privilege. The novelty required by the American law is universal novelty, with the one exception that mere prior knowledge or use abroad will not defeat the rights of a native inventor, if the foreign invention has not been patented or described in any printed publication before the date of the American invention. The general principles governing the essential degree of novelty may be briefly summarized as follows: It is established in the early cases that a new use of an old thing-technically called a double use- is not patentable. Merely mechanical changes, or colorable variations, requiring no exercise of the inventive faculty; and, in general, alterations in the form or proportions of an existing device, can not be the subject of a patent.

And while the invention itself, and not the mental process by which it was devised, is the real test of its patentability, it must still be observed that to support a patent the law requires it to appear that the invention is of such a nature as not to exclude the possibility of exercise of the inventive faculty in devising it. The terms “invented” and “discovered” mean that the subject of a patent must be a true invention or discovery, and not a mere mechanical improvement or substitution of a known “equivalent” involving mechanical skill or superior workmanship. But if the result, if the invention itself, is properly patentable, the law does not regard the mode of invention or discovery; and an accidental discovery or invention is, in the law, just as meritorious as one which is the result of laborious investigation and experiment. To satisfy the statute requirement of novelty, therefore, an invention must be substantially different from anything that has previously existed; and the criterion of the “sufficiency of invention” is the character of the invention itself, and not the degree of ingenuity or skill employed in devising it.

Qualifications of Patentees

The existing law provides for the issue of the patent in every instance to “the original and first inventor.” A radical difference between English and American law exists on this point. In England the first importer of an invention is treated as an inventor, and may obtain a patent; but under our system the patent issues only to the inventor. The only discrimination in our law in favor of citizens of the United States, is the provision that mere prior knowledge in a foreign country shall not debar a native inventor from obtaining a patent for an invention devised independently here, if at the time of making his application he really believes himself to be the first inventor. The foreign invention must have been patented or described in some printed publication prior to the date of invention in this country in order to deprive the native inventor of his patent.


Notes and References

Guide to Patent Law Qualifications

Patent Law Qualifications: Open and Free Legal Research of US Law

Federal Primary Materials

The U.S. federal government system consists of executive, legislative, and judicial branches, each of which creates information that can be the subject of legal research about Patent Law Qualifications. This part provides references, in relation to Patent Law Qualifications, to the legislative process, the federal judiciary, and the primary sources of federal law (cases, statutes, and regulations).

Federal primary materials about Patent Law Qualifications by content types:

Laws and Regulations

US Constitution
Federal Statutory Codes and Legislation

Federal Case Law and Court Materials

U.S. Courts of Appeals
United States courts of appeals, inclouding bankruptcy courts and bankcruptcy appellate panels:

Federal Administrative Materials and Resources

Presidential Materials

Materials that emanate from the President’s lawmaking function include executive orders for officers in departments and agencies and proclamations for announcing ceremonial or commemorative policies. Presidential materials available include:

Executive Materials

Federal Legislative History Materials

Legislative history traces the legislative process of a particular bill (about Patent Law Qualifications and other subjects) for the main purpose of determining the legislators’ intent behind the enactment of a law to explain or clarify ambiguities in the language or the perceived meaning of that law (about Patent Law Qualifications or other topics), or locating the current status of a bill and monitoring its progress.

State Administrative Materials and Resources

State regulations are rules and procedures promulgated by state agencies (which may apply to Patent Law Qualifications and other topics); they are a binding source of law. In addition to promulgating regulations, state administrative boards and agencies often have judicial or quasi-judicial authority and may issue administrative decisions affecting Patent Law Qualifications. Finding these decisions can be challenging. In many cases, researchers about Patent Law Qualifications should check state agency web sites for their regulations, decisions, forms, and other information of interest.

State rules and regulations are found in codes of regulations and administrative codes (official compilation of all rules and regulations, organized by subject matter). Search here:

State opinions of the Attorney General (official written advisory opinions on issues of state law related to Patent Law Qualifications when formerly requested by a designated government officer):

Tools and Forms

Law in Other Regions

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