Does Your Invention Qualify For A Patent? | IP Conversations

Why? What? When? How? These are some of the most used words in John’s dictionary. He’s pretty curious about the workings behind what happens in his life, and many of those have to do with the inventions and the workings of intellectual property in the world around him.

Lately, John’s been having a lot of conversations about what exactly it is that makes an invention patentable. He knows by now that novelty is an important factor, but he also knows there may be a few other elements he needs to consider. To know more about this, he turns to IP Geek for answers.

Hello IP Geek! So we’ve discussed before about how novelty is very important if you want to patent an invention. I wanted to know if that’s the only prerequisite for getting a patent granted, or if there are other things I need to look into and be careful about.

Hello back at you John!

I’m sure you’ll be unsurprised to know that novelty is not the only requirement for a patent. In addition to this, the invention in the application must have an inventive step, be capable of economic usage, and not be barred by the subject matter restrictions enumerated in sections 3 and 4 of the Patents Act, 1970.

Novelty requires that a new patent application showcases technology which is novel, unpublished, and unused. You do get a grace period of up to a year in some cases, but it’s always better to keep the invention completely under wraps until the application is filed and you’ve secured the priority date- ie, the date from which the novelty check is done.

Of course. And as you’ve mentioned before, it is possible to give yourself some more time to refine the application by filing a provisional patent application. It’s something I’ve been keeping in mind.

But what about the other criteria? How do you make sure to fulfil those?

Well, the inventive step is basically the crux of your invention. It’s the element of it that makes it an invention, and often what you’re trying to patent.

Basically, any person who is skilled in the art (art here meaning the field of the invention) should not see the application and go “that is very obvious”- this is also why patent examiners are field experts, because a normal person might not have the expertise to judge what is obvious in a world where technology is increasingly specialized.

The utility requirement is often the easiest one to meet. Unlike what some people initially assume, you don’t have to prove your invention is commercially marketable. It just needs to have any theoretical practical application, and be useful to someone.

And finally, there is subject matter eligibility. The Patent Act (as well as patent laws from all around the world) lists out some types of inventions that are not eligible for patents for one reason or another.

The list is pretty long and based on a variety of reasons. Discoveries are banned from being patented because they are not inventions. Inventions can also be banned if they are against public morality, which is determined by the examiner. Sections 3 & 4 need to be checked in detail before you invest in or proceed with a project.

All right, that’s good to know. It’s always great when I get information that makes things easier if I want to get a patent and market my invention. Thanks, IP Geek!