Identifying criteria for patentability Date:   Friday , June 27, 2008 What criteria must an idea meet to qualify for a patent? What is the benchmark for evaluating whether an invention is new and non-obvious before it is granted a 20 year monopoly to exclude others from making or using the invention?” While the criteria for obtaining a patent may appear subjective, in fact, it is fairly objective and well defined in the patent law. To meet the litmus test of patentability, an idea must satisfy a three-pronged test of novelty, non-obviousness, and utility. Also, the invention must not have been in public use or sale in the U.S. for more than one year prior to date of filing the patent application. The US patent statute states that an invention is deemed obvious, “…if the difference between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious to a person having ordinary skill in the art to which the subject matter pertains.” The ‘utility’ requirement is probably the easiest criteria to meet as virtually any usefulness is considered to meet the ‘utility’ requirement. These patentability criteria are the basis for determining the ‘intuition or genius’ of the inventor and the extent of usage of public domain knowledge in arriving at an invention. As an example consider the pharmaceutical sector. A large number of patents are granted on drugs, chemical compositions and processes, and methods of drug administration. Consider an inventor who obtains a patent on the active ingredient of a drug but omitted to claim important inactive ingredients such as diluents, solvents, etc. of the drug. In such a case, the competitors may patent the variants of the drug and create a picket fence around the active ingredient, thereby preventing the original inventor from obtaining a full-benefit of his/her invention. To fairly judge whether the inactive ingredients were obvious or they were due to sheer insight of the competitor, it is necessary to apply delineated and unambiguous patentability criteria. A patent is analogous to any property. The extension of the zone of protection is directly related to the breadth of the patent’s claims. A granted patent prevents others from infringing this zone of protection. At times, this zone of protection may not be sufficiently restrictive in protecting an invention. For example, overly broad patents and secondary patents covering incremental modifications made to an inventive concept may not really promote innovation. Though the patenting system was introduced with the primary aim of promoting innovation, it may be ineffective in this goal without well-balanced patentability criteria for judging the novelty and non-obviousness of inventions. Hence, it is important to apply well defined patentability criteria in granting patents to ensure a balance between protecting the interests of the inventor and the interests of the public. The recent US Supreme Court ruling in the KSR International vs. Teleflex case is a step in applying balanced patentability criteria for granting patents. The case involved the usage of electronic sensor based adjustable gas pedals. Teleflex accused KSR International of using a gas pedal technology claimed in one of Teleflex’s patents. KSR counter argued that Teleflex should not have been granted a patent for that pedal in the first place, as the combination of an electronic sensor and gas pedal technology was obvious based on prior art. The US Supreme Court reversing the decisions of a lower court held that the sensor based gas technology was obvious from the teachings of other patents and invalidated Teleflex’s patent. In his opinion, Justice Anthony Kennedy wrote for the Court, “The results of ordinary innovation are not the subject of exclusive rights under the patent laws. Were it otherwise, patents might stifle rather than promote the progress of useful arts.” In the light of this new ruling, it may appear that the bar for the standard of non-obviousness, a criteria for patentability has been considerably raised, but in fact a closer analysis shows that this decision will only weed out the ‘weaker’ inventive concepts, i.e., inventive concepts that were very obvious in view of the prior art from being allowed to issue as patents. However, this decision gives the USPTO examiners more leeway in deciding whether an inventive concept is non-obvious. As Justice Kennedy said, “Granting patent protection to advances that would occur in the ordinary course without real innovation retards progress and may… deprive prior inventions of their value and identity.” Ash Tankha, US patent attorney and Gosakan A, work with inventors to develop their ideas into patentable subject matter and file patent applications worldwide. They can be contacted at,1-866-387-5386, ash@ipprocurement.com, or www.ipprocurement.com.