In order to be patentable, an invention must pass four tests: 1. The invention must fall into one of the following categories--processes, machines, manufactured objects, compositions of matter, or new uses for any of the previous categories. 2. The invention must be "useful." 3. The invention must be novel--it cannot have been done before. 4. The invention must not be obvious to ordinary practitioners of the art to which the invention pertains.

The Categories of Inventions

The first test a patent must pass is that it must describe something that falls within one of these categories: processes, machines, manufactured objects, compositions of matter, or new uses for any of the previous categories. A process can be a method of operating a piece of equipment or a method of using a substance or object. It can also be a new use of a previously known process. Examples of processes are: a method of using a computer, a method of using a chemical, or a method for playing a game. A "machine" is a mechanical apparatus that performs a function for a human. Examples of machines include computers, carburetors, microwave ovens and telephones. A manufactured object is a product created by people or machines. Examples of manufactured objects include: a car seat, a storage container or a form of packaging. A "composition of matter" is a combination of chemical components to form a substance. Examples of compositions of matter include purified proteins, polymers, chemical solutions and metal alloys. Finally, an improvement on any of the previously described categories will also be patentable, for example, a more efficient method of using a computer or am improved object or substance.

The Utility Requirement

The second test a potential patent must pass is that it be useful. This is the easiest test to pass because it is a very low standard. There are three types of utility. First, there is a general utility, which means the object or process must have a function. Next, there is specific utility, which means that the object or process must actually perform the function it is intended to perform. And finally, there is moral, or beneficial utility, which means that the object must have some moral use. This last type of utility is no longer really in use, as it is a subjective determination. It was once used to bar patents for gambling devices, but now patents are regularly granted for gambling devices such as slot machines.

The Novelty Requirement

The novelty requirement ensures that patented devices are original and not previously disclosed to the public. To meet this requirement, the inventor must be sure not to make the invention known or allow the public to use the invention prior to obtaining a patent. The invention must not have previously been published in a fixed medium, such as a patent, newspaper, or journal article. The invention cannot have previously been invented in the United States by someone else, unless that person abandoned the invention or never made it public at all. Finally, the invention can't be the subject of an already pending patent. To make sure their patent idea is novel, inventors perform a "prior art" search. To perform a prior art search, one searches patent databases, scientific publications, and Google to make sure they find no previous reference to an invention identical to theirs.

The Non-Obviousness Requirement

The final test an invention must pass is that it be non-obvious. Most inventions solve some sort of problem by making an object, device, or process people can use to accomplish a task. If the manner of accomplishing the task would be obvious to anyone involved in the task, then it is not patentable. When determining whether an invention is non-obvious, courts use a test called the Graham test. In the Graham test, the court looks at all of the previous patents pertaining to the same subject matter and looks at how similar they are to the new invention, and the relative level of skill involved in each. Following that, they will look at the commercial success of the invention, whether it meets a long known but previously unsolved need, and whether others have failed to produce an adequate solution before this invention. If the invention has not previously been in use to address a particular problem or task and it actually does address the problem or task in a manner that hasn't been thought of before, then it probably is non-obvious.

Source:

National Center for Technology Innovation

WebPatent

United States Patent and Technology Office