How the Patent Process Works – Requirements for Patentability

In order to obtain a utility patent on an invention, the invention must be new, useful, and not obvious to one having “ordinary skill in the art.”  Designs and plans must also meet the requirements of novelty and nonobviousness to be patented.  Generally, an applicant is not entitled to a United States patent if:

  1. Applicant is not the first person to invent the device, process, or composition; or
  2. More than one (1) year before applicant files a patent application for the invention, the invention has been:
    1. In public use or offered for sale in the United States; or
    2. Patented or described in a printed publication anywhere in the world.

An application for a United States patent is filed with the PTO.  The application consists of the following parts:

  1. A specification, which is a written description of a preferred embodiment of the invention;
  2. Drawings showing the preferred embodiment of the invention when the nature of the invention is such that it can be illustrated;
  3. Claims that define the scope of the invention sought to be protected;
  4. An oath or declaration of the inventor; and
  5. A filing fee.

The specification must describe the best mode or preferred embodiment of the invention with sufficient clarity to enable one having ordinary skill in the art to make and use the invention without undue experimentation.

The claims which are contained in numbered paragraphs at the end of the specification define the scope of the invention protected by the patent.  They are the basis on which patent infringement is determined.  Hence, the claims must patentably distinguish the invention from the prior art, including previously granted patents.

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